Future Intellectual Property. For clarity, the terms and conditions of the Agreement shall not apply to any Know-How, Patent Rights, trademarks or other intellectual property rights developed or acquired by any Party after the expiration or termination of this Agreement, and no Party shall acquire any license or other rights to such future intellectual property rights of the other Parties under this Agreement.
Future Intellectual Property. At its own expense, each Grantor shall take all commercially reasonable efforts to diligently prosecute all material applications for patents or registration of Intellectual Property Rights listed on Schedule 4, in each case for such Grantor and shall not abandon any such application prior to exhaustion of all administrative and judicial remedies (other than applications (i) deemed by such Grantor in its reasonable business judgment to be no longer prudent to pursue or (ii) that are deemed by such Grantor in its reasonable business judgment to no longer be necessary in the conduct of the Grantor’s business). If any Grantor acquires Intellectual Property Rights after the effective date of this Agreement or makes an application for registration of an Intellectual Property Right before the United States Patent and Trademark Office, the United States Copyright Office, or an equivalent thereof in any state of the United States, any political subdivision thereof or in any other country or jurisdiction, within sixty (60) days of the acquisition of such Intellectual Property or submission of such application or, if later, as soon as legally permissible, such Grantor shall notify the Collateral Agent in writing concerning such Intellectual Property Right. Additionally such Grantor shall execute and deliver a grant of a security interest in such application prepared by the Collateral Agent, at the expense of such Grantor, confirming the grant of a security interest in such Intellectual Property Right to the Collateral Agent hereunder, the form of such security to be substantially in the form of Annex B hereto in the case of Marks, Annex C hereto in the case of Patents and Annex D hereto in the case of Copyrights or in such other form as may be reasonably satisfactory to the Collateral Agent; provided that the foregoing shall not apply to any Intellectual Property Right that is an Excluded Asset or Excluded Perfection Asset. Where a patent or registration that constitutes an Intellectual Property Right is issued hereafter to any Grantor as a result of any application now or hereafter pending, if a security interest in such application has not already been granted to or recorded on behalf of the Collateral Agent hereunder, such Grantor shall deliver to the Collateral Agent a grant of security interest within sixty (60) days; provided that the foregoing shall not apply to any Intellectual Property Right that is an Excluded Asset or Excluded Perfection Asset.
Future Intellectual Property. (a) The provisions of this Agreement shall automatically apply to any such additional property or rights described in subsections (a), (b), (c) and (d) of SECTION 4.12, above, all of which shall be deemed to be and treated as “Intellectual Property” or “Licenses”, as applicable, within the meaning of this Agreement or the Credit Agreement. Upon the acquisition, execution, registration or application by any Grantor of any additional Intellectual Property or material Licenses, or, subject to SECTION 4.03, in the event a deletion of any item is warranted, such as, for example, by virtue of a mistake or any expiration or abandonment of any Intellectual Property or material Licenses, Grantor shall promptly, but in no event more than ninety (90) days thereafter, deliver to the Collateral Agent an updated Exhibit A, B, C and/or D (as applicable) to this Agreement and hereby authorizes the Collateral Agent to file, at such Grantor’s expense, such updated Exhibit as set forth in SECTION 4.13(c).
(b) Subject to each Grantor’s obligations in SECTION 4.03, for any item that is deleted in connection with an updated Exhibit pursuant to SECTION 4.13(a), the Collateral Agent shall execute such documents as may be necessary to evidence the release of the Liens on such item within thirty (30) business days of receipt of the updated Exhibit.
(c) Upon the reasonable written request of the Collateral Agent, each of the Grantors shall execute and deliver, and have recorded, any and all agreements, instruments, documents and papers as the Collateral Agent may reasonably request, including but not limited to notices of security interests substantially in the form of Exhibit E (Notice of Security Interest in Trademarks and Patents) or Exhibit F (Notice of Security Interest in Copyrights), as applicable, attached hereto, to evidence the Collateral Agent’s security interest in any Intellectual Property in the United States (including, without limitation, filings with the PTO, the Copyright Office or any similar government office, as applicable), and each of the Grantors hereby appoints the Collateral Agent as its attorney-in-fact for the sole purpose of executing and filing all such writings for the foregoing purposes, all such acts of such attorney being hereby ratified and confirmed; provided, however, the Collateral Agent’s taking of such action shall not be a condition to the creation or perfection of the security interest created hereby.
Future Intellectual Property. 3.1 Upon the filing or acquisition of any Future IP, Pathway shall notify Sundial within [***] days of such filing or acquisition and provide Sundial, in the same notice, a right to receive an exclusive license to such Future IP on the same terms as set forth in Section 2.1 and 2.2 hereof (the “Right of First Refusal”). Sundial shall have [***] days upon receipt of such notice to exercise the Right of First Refusal by written notice to Pathway. Upon the exercise of such right of First Refusal, the applicable Future IP will be deemed to be included in the Pathway IP under this Agreement.
3.2 Within [***] (the “Test Period”) of Sundial’s election to receive a license on the Future IP (the “Elected Future IP”) in accordance with Section 3.1 (the “Election”), if Sundial does not generate annual Gross Revenue that meets a minimum revenue target for the Elected Future IP as agreed upon by the Parties at the time of the Election (the “Minimum Revenue Target”) for the year immediately prior to each Royalty Due date from the sale of Products using the Elected Future IP and other Use of the Elected Future IP, Pathway shall have the right to assign, license or otherwise commercialize the applicable Elected Future IP to a third party on terms within Pathway’s discretion with notice to Sundial, subject to confidentiality obligations of Pathways to the third party, provided however that, when assigning, licensing, or otherwise commercializing such Elected Future IP, Pathway will maintain the necessary rights to allow it to license the Elected Future IP to Sundial as required under the terms and conditions of this Agreement. The Minimum Revenue Target shall be prorated to adjust for any partial years occurring during the Test Period.
Future Intellectual Property. Licensor agrees that all Intellectual Property owned by it arising out of the past or future operations of a Company Entity not transferred pursuant to this Agreement shall be owned exclusively by a Company Entity and Licensor shall take all such steps necessary to transfer the ownership of any such Intellectual Property not transferred pursuant to Section 1(b) hereof. Until the transfer of all such Intellectual Property receives Official Approval, such Company Entity shall have a License to such Intellectual Property as set forth in Section 1(a) hereof.
Future Intellectual Property. Section 5(f) of the Security Agreement is hereby amended by deleting the second sentence therefrom and substituting the following therefor: “If any Grantor acquires Intellectual Property Rights after the effective date of this Agreement or makes an application for registration of an Intellectual Property Right before the United States Patent and Trademark Office, the United States Copyright Office, or an equivalent thereof in any state of the United States, any political subdivision thereof or in any other country or jurisdiction, within sixty (60) days of the end of the fiscal quarter of the Company in which such acquisition or submission occurs or, if later, as soon as legally permissible, such Grantor shall notify the Collateral Agent in writing concerning such Intellectual Property Right.”.
Future Intellectual Property. 8.1 In the event that future intellectual property, related to the Patent Rights, is developed solely in Licensee’s founders’ academic facilities and is fully funded by Licensee (“Funded Future IP”), UIRF will grant Licensee a license to Funded Future IP under the same terms as the Patent Rights, except that UIRF will not credit an additional [**] ([**]), nor agree to defer reimbursement of an additional [**] ([**]) towards expenses associated with the preparation, filing, prosecution and maintenance of the Patent Rights.
8.2 In the event that future intellectual property related to the Patent Rights is developed solely in Licensee’s founders’ academic facilities, and is not fully funded by Licensee (“Unfunded Future IP”), UIRF may license Unfunded Future IP to Licensee. In order to qualify, the following conditions for Unfunded Future IP must be met:
8.2.1 The intellectual property must be disclosed in writing to UIRF within five years of the Effective Date of this Agreement;
8.2.2 Alternative sources of funding have not taken ownership of the Unfunded Future IP;
8.2.3 The inventors of Unfunded Future IP must agree to licensing to Licensee; and
8.2.4 The UIRF has not been restricted from offering such Unfunded Future IP to licensee. In the event one or more of these conditions is not met, the Parties will cooperate in good faith to negotiate a license to such Unfunded Future IP.
8.3 If the requirements of 8.2 have been met, UIRF will grant LICENSEE a license to Unfunded Future IP including, but not limited to, the following terms:
8.3.1 Licensee pays UIRF a flat upfront fee of [**] ([**]). Licensee may request in writing that payment of such fee be deferred. If the UIRF agrees to grant this request, Lxxxxxxx agrees to a convertible note equal to [**] ([**]). Such convertible note will include five percent (5%) annual interest. Licensee will make interest-only annual payments for the first six years of the note. Payment will be due on the anniversary of Lxxxxxxx’s written request for deferred reimbursement. On the seventh year, Licensee will pay UIRF the outstanding principal sum.
8.3.2 Payment as described in 8.3.1 will be due upon signing the License amendment.
Future Intellectual Property. If, before the Obligations shall have been satisfied in full, Debtor shall obtain rights to any new Collateral, or become entitled to the benefit of any patent or trademark application, any renewal of any trademark contained in the Collateral, or patent for reissue, division, continuation, renewal, extension or continuation-in-part or any improvement thereon, the provisions of Section 1.1 hereof shall automatically apply thereto, and Debtor shall give the Collateral Agent prompt notice thereof in writing.
Future Intellectual Property. To the extent not already disclosed in writing to the Lenders, if Borrower (i) obtains any Patent, registered Trademark, registered Copyright, registered mask work, or any pending application for any of the foregoing, whether as owner, licensee or otherwise, or (ii) applies for any Patent or the registration of any Trademark, then Borrower shall disclose the foregoing to the Agent and shall execute such intellectual property security agreements and other documents and take such other actions as the Agent may request in its good faith business judgment to perfect and maintain a perfected security interest in favor of the Secured Parties in such property. If Borrower decides to register any Copyrights or mask work in the United States Copyright Office, Borrower shall: (i) provide the Agent with at least fifteen (15) days prior written notice of Borrower’s intent to register such Copyrights or mask works together with a copy of the application it intends to file with the United States Copyright Office (excluding exhibits thereto); (ii) execute an intellectual property security agreement and such other documents and take such other actions as the Agent may request in their good faith business judgment to perfect and maintain a perfected security interest in favor of the Secured Parties in the Copyrights or mask works intended to be registered with the United States Copyright Office; and (iii) record such intellectual property security agreement with the United States Copyright Office contemporaneously with filing the Copyright or mask work application(s) with the United States Copyright Office. Borrower shall promptly provide to the Agent copies of all applications that it files for Patents or for the registration of Trademarks, Copyrights or mask works, together with evidences of the recording of the intellectual property security agreement required for the Agent to perfect and maintain a perfected security interest in such property.
Future Intellectual Property. If, before the Secured Obligations ---------------------------- shall have been satisfied in full, Assignor shall either obtain rights to any invention or become entitled to any rights under or the benefit of any United States or foreign patent application or patent, including any reissue, divisional, continuation, or continuation-in-part patent applications or reexamination certificates related to any of the Patents or to any improvement on any of the Patents, or shall obtain rights in any United States or foreign trademark, service xxxx or tradename or any registrations or applications for registration thereof, the provisions of paragraph 2 (except for the Schedule which will contain only registered Patents and Marks) shall automatically apply thereto and Assignor shall give to the Agent prompt notice thereof in writing.
