Common use of Co-Licensed Clause in Contracts

Co-Licensed. This Section 2(c)(iii) is subject to Sections 2(c)(ii)(1) and (2) and Section 2(c)(vi). 1. If both GrayBug and Kala, within [**] Business Days after receipt of a notice for Future Patent Rights from JHU pursuant to Section 2(c)(i) above, send a written notice to JHU and the other Party requesting a license under such Future Patent Rights, then JHU shall be deemed to have granted (A) to GrayBug a worldwide, royalty-bearing (in accordance with the terms of the GrayBug/JHU Agreement, as amended herein, and specifically as amended by Section 4), sublicenseable (in accordance with Section 2(c)(iii)(2)), non-exclusive license, under such Future Patent Rights, to research, develop, make, have made, use, have used, import, have imported, offer to sell, have offered for sale, sell and have sold Licensed Products in the GrayBug Field of Use, and to provide and have provided Licensed Services in the GrayBug Field of Use, in the United States and worldwide, and (B) to Kala a worldwide, royalty-bearing (in accordance with the terms of the Kala/JHU Agreement, as amended herein, and specifically as amended by Section 4), sublicenseable (in accordance with Section 2(c)(iii)(2)), non-exclusive license, under such Future Patent Rights, to research, develop, make, have made, use, have used, import, have imported, offer to sell, have offered for sale, sell and have sold Licensed Products in the Kala Field of Use, and to provide and have provided Licensed Services in the Kala Field of Use, in the United States and worldwide. If, pursuant to Section 9(c) or in accordance with the terms of its Existing JHU License Agreement, a Party terminates (or JHU terminates, which termination is not then being disputed by such Party) the license to such Party in its Exclusive Field under this Section 2(c)(iii)(1) with respect to a Future Patent Right, such Exclusive Field with respect to such Future Patent Right shall be automatically licensed to the other Party under such other Party’s Existing JHU License Agreement with no rights thereunder retained by such terminated(ing) Party, and all sublicensees receiving sublicenses granted by such terminated(ing) Party in such Exclusive Field under such Future Patent Right shall be deemed sublicensees of JHU. JHU shall provide the other Party written notice of the termination of a Party’s license in its Exclusive Field with respect to a Future Patent Right, and the other Party shall have [**] Business Days from its receipt of the notice to send JHU a written notice that the Party declines to accept the automatic license described in this section. The other Party shall not be obligated to pay the portion of any costs or fees attributable to or to be paid by the terminated(ing) Party for such Future Patent Rights incurred after the termination unless and until such Party accepts the automatic license by not providing a notice to JHU declining such automatic license within the time period specified in the preceding sentence.

Co-Licensed. This Section 2(c)(iii) is subject to Sections 2(c)(ii)(1) and (2) and Section 2(c)(vi).. ​ 1. If both GrayBug and Kala, within [**] Business Days after receipt of a notice for Future Patent Rights from JHU pursuant to Section 2(c)(i) above, send a written notice to JHU and the other Party requesting a license under such Future Patent Rights, then JHU shall be deemed to have granted (A) to GrayBug a worldwide, royalty-bearing (in accordance with the terms of the GrayBug/JHU Agreement, as amended herein, and specifically as amended by Section 4), sublicenseable (in accordance with Section 2(c)(iii)(2)), non-exclusive license, under such Future Patent Rights, to research, develop, make, have made, use, have used, import, have imported, offer to sell, have offered for sale, sell and have sold Licensed Products in the GrayBug Field of Use, and to provide and have provided Licensed Services in the GrayBug Field of Use, in the United States and worldwide, and (B) to Kala a worldwide, royalty-bearing (in accordance with the terms of the Kala/JHU Agreement, as amended herein, and specifically as amended by Section 4), sublicenseable (in accordance with Section 2(c)(iii)(2)), non-exclusive license, under such Future Patent Rights, to research, develop, make, have made, use, have used, import, have imported, offer to sell, have offered for sale, sell and have sold Licensed Products in the Kala Field of Use, and to provide and have provided Licensed Services in the Kala Field of Use, in the United States and worldwide. If, pursuant to Section 9(c) or in accordance with the terms of its Existing JHU License Agreement, a Party terminates (or JHU terminates, which termination is not then being disputed by such Party) the license to such Party in its Exclusive Field under this Section 2(c)(iii)(1) with respect to a Future Patent Right, such Exclusive Field with respect to such Future Patent Right shall be automatically licensed to the other Party under such other Party’s Existing JHU License Agreement with no rights thereunder retained by such terminated(ing) Party, and all sublicensees receiving sublicenses granted by such terminated(ing) Party in such Exclusive Field under such Future Patent Right shall be deemed sublicensees of JHU. JHU shall provide the other Party written notice of the termination of a Party’s license in its Exclusive Field with respect to a Future Patent Right, and the other Party shall have [**] Business Days from its receipt of the notice to send JHU a written notice that the Party declines to accept the automatic license described in this section. The other Party shall not be obligated to pay the portion of any costs or fees attributable to or to be paid by the terminated(ing) Party for such ​ ​ ​ Future Patent Rights incurred after the termination unless and until such Party accepts the automatic license by not providing a notice to JHU declining such automatic license within the time period specified in the preceding sentence.

Co-Licensed. This Section 2(c)(iii) is subject to Sections 2(c)(ii)(1) and (2) and Section 2(c)(vi). 1. If both GrayBug and Kala, within [**] Business Days after receipt of a notice for Future Patent Rights from JHU pursuant to Section 2(c)(i) above, send a written notice to JHU and the other Party requesting a license under such Future Patent Rights, then JHU shall be deemed to have granted (A) to GrayBug a worldwide, royalty-bearing (in accordance with the terms of the GrayBug/JHU Agreement, as amended herein, and specifically as amended by Section 4), sublicenseable (in accordance with Section 2(c)(iii)(2)), non-exclusive license, under such Future Patent Rights, to research, develop, make, have made, use, have used, import, have imported, offer to sell, have offered for sale, sell and have sold Licensed Products in the GrayBug Field of Use, and to provide and have provided Licensed Services in the GrayBug Field of Use, in the United States and worldwide, and (B) to Kala a worldwide, royalty-bearing (in accordance with the terms of the Kala/JHU Agreement, as amended herein, and specifically as amended by Section 4), sublicenseable (in accordance with Section 2(c)(iii)(2)), non-exclusive license, under such Future Patent Rights, to research, develop, make, have made, use, have used, import, have imported, offer to sell, have offered for sale, sell and have sold Licensed Products in the Kala Field of Use, and to provide and have provided Licensed Services in the Kala Field of Use, in the United States and worldwide. If, pursuant to Section 9(c) or in accordance with the terms of its Existing JHU License Agreement, a Party terminates (or JHU terminates, which termination is not then being disputed by such Party) the license to such Party in its Exclusive Field under this Section 2(c)(iii)(1) with respect to a Future Patent Right, such Exclusive Field with respect to such Future Patent Right shall be automatically licensed to the other Party under such other Party’s Existing JHU License Agreement with no rights thereunder retained by such terminated(ing) Party, and all sublicensees receiving sublicenses granted by such terminated(ing) Party in such Exclusive Field under such Future Patent Right shall be deemed sublicensees of JHU. JHU shall provide the other Party written notice of the termination of a Party’s license in its Exclusive Field with respect to a Future Patent Right, and the other Party shall have [**] Business Days from its receipt of the notice to send JHU a written notice that the Party declines to accept the automatic license described in this section. The other Party shall not be obligated to pay the portion of any costs or fees attributable to or to be paid by the terminated(ing) Party for such Future Patent Rights incurred after the termination unless and until such Party accepts the automatic license by not providing a notice to JHU declining such automatic license within the time period specified in the preceding sentence.