Common use of Future Third Party Licenses Clause in Contracts

Future Third Party Licenses. The ITI Technology licensed to Takeda in Section 2.1(b) will include Patents or Information licensed to ITI by a Third Party after the Effective Date only if the following procedure is complied with: (i) ITI discloses to Takeda for review, reasonably in advance of ITI’s anticipated entry into the applicable agreement between ITI and such Third Party, the substantive terms of such license agreement (which ITI hereby covenants to do), at least to the extent Takeda can reasonably understand the contents of the applicable Patents and Information, the scope of the license and the financial terms thereof; provided that upon Takeda’s reasonable request, Takeda may participate in ITI’s negotiation with the Third Party, provided that ITI shall have the sole right to agree to any terms with such Third Party (which terms will bind Takeda only if agreed by Takeda in accordance with sub-section (ii) below), or Takeda may negotiate a direct license with the Third Party; and (ii) Takeda provides ITI with written notice, prior to ITI’s entry into such license agreement, in which (A) Takeda assumes all payment obligations under such license agreement to the extent arising out of the use, Development, Manufacture or Commercialization of any Compound or Product by or on behalf of Takeda, as well as all other obligations of such license agreement that are applicable to sublicensees, and (B) Takeda acknowledges in writing that its sublicense under such license agreement is subject to the terms and conditions of such license agreement. For the avoidance of doubt, if only such Third Party’s Patents cover a particular Product in a country, and the remaining ITI Patents and the Joint Patents do not cover such Product in such country, then the royalty term under Section 8.5(b)(i) shall not be extended on account of such Third Party’s Patents. Any applicable Patents and Information for which the above conditions are not met shall be deemed “Excluded Patents” and “Excluded Information,” respectively.

Future Third Party Licenses. The ITI Technology licensed to Takeda Section 8.5 of the License Agreement is hereby deleted in Section 2.1(b) will include Patents or Information licensed to ITI by a its entirety and replaced with the following: “Future Third Party Licenses. The Parties shall [***] all amounts owed to Third Parties after the Effective Date only if pursuant to any [***] or other Third Party agreed upon by the following procedure Parties, license or technology acquisition agreement under which a Party obtains rights to a Third Party patent or know-how that is complied with: necessary or useful for the Development, manufacture or Commercialization of Licensed Products. In the event that either Party identifies such intellectual property, it shall notify the other Party and the Parties shall promptly meet and designate one Party to obtain such license or otherwise acquire such necessary rights on commercially reasonable terms (i) ITI discloses such party the “Lead Party”). Prior to Takeda for review, reasonably in advance of ITI’s anticipated entry entering into the applicable agreement between ITI and such Third Partyagreement, the substantive Lead Party shall share with the other Party the terms of such license agreement (which ITI hereby covenants to do), at least to the extent Takeda can reasonably understand the contents of the applicable Patents Third Party agreement and Informationthe consent of both Parties [***] CONFIDENTIAL PORTIONS OF THIS DOCUMENT REDACTED AND SEPARATELY FILED WITH THE COMMISSION. shall be required for the Lead Xxxxx to enter into such agreement for the purpose of sharing the cost of such payments hereunder. Upon receipt of such consent, the scope Lead Party shall enter into such Third Party agreement and shall be responsible for making all payments to the applicable Third Party. The other Party shall reimburse the Lead Party for its [***] of such payments [***] an invoice for such payment. In the event that the other Party does not consent to the entry of a proposed Third Party agreement on terms proposed by the Lead Party within [***] following receipt of notice of the license and the financial terms thereof; provided that upon Takeda’s reasonable request, Takeda may participate in ITI’s negotiation then the Lead Party shall have the right to enter into the proposed agreement with the Third Party, provided that ITI the Parties agree that in such event the rights to any patent or know-how obtained under such Agreement by the Lead Party shall be excluded from any patent or know-how licensed to the other Party under this Agreement. Notwithstanding the foregoing, and for greater certainty, the Parties agree that in respect of that license agreement between The Regents of the University of California and KaloBios dated October 4, 2011 concerning rights in a joint invention arising from a sponsored research agreement dated January 8, 2008 regarding a project entitled: “[***]” (the “2nd UCSF License”), that Sanofi shall have no obligation to make any payment to KaloBios or the sole right to agree to University of California for milestone payments (i.e. those set out in Article 9 thereof) for any terms with such Third Party “Licensed Products” (which terms will bind Takeda only if agreed by Takeda as that term is defined under that specific agreement) in accordance with sub-section (ii) below), or Takeda may negotiate a direct license with the Third Party; and (ii) Takeda provides ITI with written notice, prior to ITI’s entry into such license agreement, KaloBios Field in which (A) Takeda assumes all payment obligations under such license agreement Sanofi does not have commercial rights pursuant to the extent arising out of the use, Development, Manufacture or Commercialization of any Compound or Product by or on behalf of Takeda, as well as all other obligations of such license agreement that are applicable to sublicensees, and (B) Takeda acknowledges in writing that its sublicense under such license agreement is subject to the terms and conditions of such license agreement. For the avoidance of doubt, if only such Third Party’s Patents cover a particular Product in a country, and the remaining ITI Patents and the Joint Patents do not cover such Product in such country, then the royalty term under Section 8.5(b)(i) shall not be extended on account of such Third Party’s Patents. Any applicable Patents and Information for which the above conditions are not met shall be deemed “Excluded Patents” and “Excluded Information,” respectivelythis Agreement.”

Future Third Party Licenses. The ITI Technology licensed to Takeda Section 8.5 of the License Agreement is hereby deleted in Section 2.1(b) will include Patents or Information licensed to ITI by a its entirety and replaced with the following: “Future Third Party Licenses. The Parties shall [***] all amounts owed to Third Parties after the Effective Date only if pursuant to any [***] or other Third Party agreed upon by the following procedure Parties, license or technology acquisition agreement under which a Party obtains rights to a Third Party patent or know-how that is complied with: necessary or useful for the Development, manufacture or Commercialization of Licensed Products. In the event that either Party identifies such intellectual property, it shall notify the other Party and the Parties shall promptly meet and designate one Party to obtain such license or otherwise acquire such necessary rights on commercially reasonable terms (i) ITI discloses such party the “Lead Party”). Prior to Takeda for review, reasonably in advance of ITI’s anticipated entry entering into the applicable agreement between ITI and such Third Partyagreement, the substantive Lead Party shall share with the other Party the terms of such license agreement (which ITI hereby covenants to do), at least to the extent Takeda can reasonably understand the contents of the applicable Patents Third Party agreement and Informationthe consent of both Parties [***] CONFIDENTIAL PORTIONS OF THIS DOCUMENT REDACTED AND FILED SEPARATELY WITH THE COMMISSION shall be required for the Lead Xxxxx to enter into such agreement for the purpose of sharing the cost of such payments hereunder. Upon receipt of such consent, the scope Lead Party shall enter into such Third Party agreement and shall be responsible for making all payments to the applicable Third Party. The other Party shall reimburse the Lead Party for its [***] share of such payments within thirty (30) days of the license and end of the financial month following the receipt of an invoice for such payment. In the event that the other Party does not consent to the entry of a proposed Third Party agreement on terms proposed by the Lead Party within thirty (30) days following receipt of notice of the terms thereof; provided that upon Takeda’s reasonable request, Takeda may participate in ITI’s negotiation then the Lead Party shall have the right to enter into the proposed agreement with the Third Party, provided that ITI the Parties agree that in such event the rights to any patent or know-how obtained under such Agreement by the Lead Party shall be excluded from any patent or know-how licensed to the other Party under this Agreement. Notwithstanding the foregoing, and for greater certainty, the Parties agree that in respect of that license agreement between The Regents of the University of California and KaloBios dated October 4, 2011 concerning rights in a joint invention arising from a sponsored research agreement dated January 8, 2008 regarding a project entitled: “[***]” (the “2nd UCSF License”), that Sanofi shall have no obligation to make any payment to KaloBios or the sole right to agree to University of California for milestone payments (i.e. those set out in Article 9 thereof) for any terms with such Third Party “Licensed Products” (which terms will bind Takeda only if agreed by Takeda as that term is defined under that specific agreement) in accordance with sub-section (ii) below), or Takeda may negotiate a direct license with the Third Party; and (ii) Takeda provides ITI with written notice, prior to ITI’s entry into such license agreement, KaloBios Field in which (A) Takeda assumes all payment obligations under such license agreement Sanofi does not have commercial rights pursuant to the extent arising out of the use, Development, Manufacture or Commercialization of any Compound or Product by or on behalf of Takeda, as well as all other obligations of such license agreement that are applicable to sublicensees, and (B) Takeda acknowledges in writing that its sublicense under such license agreement is subject to the terms and conditions of such license agreement. For the avoidance of doubt, if only such Third Party’s Patents cover a particular Product in a country, and the remaining ITI Patents and the Joint Patents do not cover such Product in such country, then the royalty term under Section 8.5(b)(i) shall not be extended on account of such Third Party’s Patents. Any applicable Patents and Information for which the above conditions are not met shall be deemed “Excluded Patents” and “Excluded Information,” respectivelythis Agreement.”