Common use of Improvements by UHN non-PI(s) Clause in Contracts

Improvements by UHN non-PI(s). (i) In consideration of MBI providing to UHN the payments described in this Agreements, UHN hereby grants to MBI a right of first negotiation for an exclusive, royalty-bearing license, with the right to grant sublicenses without consent, to any Improvements by UHN non-PI(s) (including any associated Know-how) for the Licensed Field in the Territory. UHN will provide MBI with written notice of each Improvement by UHN non-PI(s) promptly after UHN files a Patent application for such Improvement by UHN non-PI(s), which notice shall be accompanied by sufficient data and other information to enable MBI to evaluate such Improvement by UHN non-PI(s). MBI will have six (6) months after receiving written notice from UHN to provide written notice to UHN of its intent to license said improvement (in this subsection, a “Notice of Intent”). If UHN does not receive a Notice of Intent under this Subsection 2.3(b) within six (6) months, MBI’s right of first refusal will lapse and UHN will be free to dispose of the Improvement by UHN non-PI(s) as it sees fit. After the Notice of Intent has been received further to this Subsection 2.3(b), both Parties shall diligently and in good faith negotiate the addition of such Improvement by UHN non-PI(s) to the Licensed Technology under this Agreement or the licensing thereof under a separate license agreement. Any such separate license shall be on terms and conditions that are consistent with other such licenses within the industry and satisfactory to UHN. If the Parties have not agreed on the license agreement within nine (9) months of receipt of the Notice of Intent further to this Subsection 2.3(b), UHN will be free to dispose of the Improvement by UHN non-PI(s) as it sees fit. (ii) Each right of first negotiation and each license granted to MBI by UHN in and to any Improvements by UHN non-PI(s) under this Subsection 2.3(b) will be subject to Third Party Intellectual Property Rights. For each Independent Invention for which MBI has a right of first negotiation, UHN and MBI shall cooperate and work together, prior to any Third Party being granted any interest in the Intellectual Property Rights in such Improvements by UHN non-PI(s), to review the merits of any claims made by any Third Parties to the Intellectual Property Rights in such Improvements by UHN non-PI(s). For each Improvement by UHN non-PI(s) for which MBI has delivered a Notice of Intent, and for which no Third Party claim is substantiated, UHN and MBI shall in good faith negotiate a license to MBI for the Intellectual Property Rights in the Improvements by UHN non-PI(s). UHN shall keep MBI apprised of any facts that may arise from time to time where a Third Party may have or make a claim to Intellectual Property Rights in any Improvements by UHN non-PI(s). If a Third Party makes an unsubstantiated claim to Intellectual Property Rights in an Improvement by UHN non-PI(s), UHN and MBI shall cooperate on the appropriate course of action to defend against any such claim or challenge, restrain or enjoin any Intellectual Property Rights asserted by the Third Party in UHN’s discretion, acting reasonably, and in good faith in order to protect MBI’s interests in such Intellectual Property Rights. UHN shall take the lead in discussions with any Third Parties relating to any such claims; provided that, in the unlikely event of litigation, MBI shall have the right to control any such litigation, including the right to settle any dispute in any manner it deems expedient, and UHN shall reasonably assist MBI in connection therewith.

Improvements by UHN non-PI(s). (i) In consideration of MBI providing to UHN the payments described in this Agreements, UHN hereby grants to MBI a right of first negotiation for an exclusive, royalty-bearing license, with the right to grant sublicenses without consent, to any Improvements by UHN non-PI(s) (including any associated Know-how) for the Licensed Field in the Territory. UHN will provide MBI with written notice of each Improvement by UHN non-PI(s) promptly after UHN files a Patent application for such Improvement by UHN non-PI(s), which notice shall be accompanied by sufficient data and other information to enable MBI to evaluate such Improvement by UHN non-PI(s). MBI will have six (6) months after receiving written notice from UHN to provide written notice to UHN of its intent to license said improvement (in this subsection, a “Notice of Intent”). If UHN does not receive a Notice of Intent under this Subsection 2.3(b) within six (6) months, MBI’s right of first refusal will lapse and UHN will be free to dispose of the Improvement by UHN non-PI(s) as it sees fit. After the Notice of Intent has been received further to this Subsection 2.3(b), both Parties shall diligently and in good faith negotiate the addition of such Improvement by UHN non-PI(s) to the Additional Licensed Technology under this Agreement or the licensing thereof under a separate license agreement. Any such separate license shall be on terms and conditions that are consistent with other such licenses within the industry and satisfactory to UHN. If the Parties have not agreed on the license agreement within nine (9) months of receipt of the Notice of Intent further to this Subsection 2.3(b), UHN will be free to dispose of the Improvement by UHN non-PI(s) as it sees fit. (ii) Each right of first negotiation and each license granted to MBI by UHN in and to any Improvements by UHN non-PI(s) under this Subsection 2.3(b) will be subject to Third Party Intellectual Property Rights. For each Independent Invention for which MBI has a right of first negotiation, UHN and MBI shall cooperate and work together, prior to any Third Party being granted any interest in the Intellectual Property Rights in such Improvements by UHN non-PI(s), to review the merits of any claims made by any Third Parties to the Intellectual Property Rights in such Improvements by UHN non-PI(s). For each Improvement by UHN non-PI(s) for which MBI has delivered a Notice of Intent, and for which no Third Party claim is substantiated, UHN and MBI shall in good faith negotiate a license to MBI for the Intellectual Property Rights in the Improvements by UHN non-PI(s). UHN shall keep MBI apprised of any facts that may arise from time to time where a Third Party may have or make a claim to Intellectual Property Rights in any Improvements by UHN non-PI(s). If a Third Party makes an unsubstantiated claim to Intellectual Property Rights in an Improvement by UHN non-PI(s), UHN and MBI shall cooperate on the appropriate course of action to defend against any such claim or challenge, restrain or enjoin any Intellectual Property Rights asserted by the Third Party in UHN’s discretion, acting reasonably, and in good faith in order to protect MBI’s interests in such Intellectual Property Rights. UHN shall take the lead in discussions with any Third Parties relating to any such claims; provided that, in the unlikely event of litigation, MBI shall have the right to control any such litigation, including the right to settle any dispute in any manner it deems expedient, and UHN shall reasonably assist MBI in connection therewith.