Common use of License Grants to Roche Clause in Contracts

License Grants to Roche. Subject to the terms and conditions of this Agreement, Prothena hereby grants to Roche (excluding [*]): (a) under the Prothena Technology, an exclusive (subject to Prothena’s and its Affiliates’ retained rights to conduct Development activities under this Agreement), royalty-bearing license, with the right to grant sublicenses in accordance with Section 2.3, to Develop, make, have made, use, sell, offer to sell, import, and export Licensed Compounds and Licensed Products in the Field in the Royalty Territory. (b) under the Prothena Technology, an exclusive (subject to Prothena’s and its Affiliates’ retained rights to conduct Development activities under this Agreement) license, subject to the sharing of Profit and Loss as set forth in Section 9.3, with the right to grant sublicenses in accordance with Section 2.3, to Develop, make, have made, use, sell, offer to sell, import, and export Licensed Compounds included in the Jointly Funded Product/Indications, and such Jointly Funded Product/Indications, in the Field in the Shared Territory; provided, however, that the foregoing license shall be co-exclusive (with Prothena and its Affiliates) with respect to co-Detailing, subject to Prothena exercising its Co-Detailing Option, during the time Prothena is co-Detailing in the Shared Territory. For clarity, the only Licensed Products in the Shared Territory are Jointly Funded Product/Indications. (c) under the Prothena Trademarks, a non-exclusive, royalty-free license, with the right to grant sublicenses in accordance with Section 2.3, to use and display such Trademarks in connection with the Commercialization of Licensed Products in the Field in the Territory, as provided under and in accordance with Section 7.6 and the Co-Detailing Agreement. Notwithstanding the foregoing, the exclusive licenses granted by Prothena to Roche under this Section 2.1 shall be subject to any in-licenses to Prothena that may be nonexclusive.

License Grants to Roche. (a) Subject to the terms and conditions of this Second Amended and Restated Worldwide Agreement, Prothena hereby PDL grants to Roche and to Roche’s Affiliates, during the Commercialization Term, the exclusive (excluding [*]): (aeven as to PDL) right and license under the Prothena TechnologyPDL Know-How and PDL Patents to (i) market, an exclusive promote, and detail Nutley Dac in the Roche Territory solely for use in Transplant Induction, and (subject ii) to Prothenasell and offer for sale Nutley Dac in the Roche Territory under the Trademarks. In addition, PDL grants to Roche and to Roche’s Affiliates, the nonexclusive right under the PDL Know-How and its Affiliates’ retained rights PDL Patents to conduct Development activities under this Agreement), royalty-bearing license, with the right to grant sublicenses in accordance with Section 2.3, to Develop, make, have made, useuse and import Nutley Dac, sell, offer but only to sell, import, the extent reasonably necessary for Roche to carry out its rights and export Licensed Compounds and Licensed Products in the Field in the Royalty Territory. (b) under the Prothena Technology, an exclusive (subject to Prothena’s and its Affiliates’ retained rights to conduct Development activities obligations under this Agreement) license, subject to the sharing of Profit Second Amended and Loss as set forth in Section 9.3, with the right to grant sublicenses in accordance with Section 2.3, to Develop, make, have made, use, sell, offer to sell, import, and export Licensed Compounds included in the Jointly Funded Product/Indications, and such Jointly Funded Product/Indications, in the Field in the Shared Territory; provided, however, that the foregoing license shall be co-exclusive (with Prothena and its Affiliates) with respect to co-Detailing, subject to Prothena exercising its Co-Detailing Option, during the time Prothena is co-Detailing in the Shared Territory. For clarity, the only Licensed Products in the Shared Territory are Jointly Funded Product/Indications. (c) under the Prothena Trademarks, a non-exclusive, royalty-free license, with the right to grant sublicenses in accordance with Section 2.3, to use and display such Trademarks in connection with the Commercialization of Licensed Products in the Field in the Territory, as provided under and in accordance with Section 7.6 and the Co-Detailing Restated Worldwide Agreement. Notwithstanding Roche may sublicense the foregoing, the exclusive rights and licenses granted by Prothena to Roche under this Section 2.1 2.5, subject to PDL’s written consent, which consent PDL may not unreasonably withhold. It shall be subject deemed reasonable for PDL to withhold consent with respect to sublicense by Roche of any of the rights or licenses to any in-other entity that is [****], or [****]. Notwithstanding the preceding sentence, Roche and its Affiliates may use Third Party distributors in accordance with their customary practices. All sublicenses granted by Roche or its Affiliates of the licenses set forth in this Section 2.5(a) shall automatically terminate at the end of the Commercialization Term. **** Certain information on this page has been omitted and filed separately with the commission. Confidential treatment has been requested with respect to Prothena that may be nonexclusivethe omitted portions.

License Grants to Roche. (a) Subject to the terms and conditions of this Amended and Restated Worldwide Agreement, Prothena hereby PDL grants to Roche and to Roche’s Affiliates, during the Commercialization Term, the exclusive (excluding even as to PDL) right and license under the PDL Know-How and PDL Patents to (i) market, promote, and detail Daclizumab in the Roche Territory solely for use in the Transplant Indications, and (ii) to sell and offer for sale Daclizumab in the Roche Territory under the Trademarks. In addition, PDL grants to Roche and to Roche’s Affiliates, the nonexclusive right under the PDL Know-How and PDL Patents to make, have made and import Daclizumab, but only to the extent reasonably necessary for Roche to carry out its rights and obligations under this Amended and Restated Worldwide Agreement. Roche may sublicense the rights and licenses granted to Roche under this Section 2.5, subject to PDL’s written consent, which consent PDL may not unreasonably withhold. It shall be deemed reasonable for PDL to withhold consent with respect to sublicense by Roche of any of the rights or licenses to any other entity that is [*] (in at least one [*] with [*]):), or [*] in a [*] any [*] for the [*] of any [*]. Notwithstanding the preceding sentence, Roche and its Affiliates may use Third Party distributors in accordance with their customary practices. All sublicenses granted by Roche or its Affiliates of the licenses set forth in this Section 2.5(a) shall automatically terminate on the Reversion Effective Date or Put Right Effective Date. (ab) under Subject to the Prothena Technologyterms and conditions of this Amended and Restated Worldwide Agreement, an in particular the restrictions set forth in Section 3.1(b), PDL grants to Roche and to Roche’s Affiliates the exclusive (subject even as to Prothena’s PDL) right and its Affiliates’ retained rights to conduct Development activities under this Agreement), royalty-bearing license, with including the right to grant sublicenses sublicenses, under the PDL Know-How and PDL Patents to use, develop, make, have made, sell, offer for sale, and import the Excluded Products in accordance with the Roche Territory; provided, however that the license granted under this Section 2.32.5(b) under [*] shall be nonexclusive. (c) PDL hereby covenants that, to Developuntil the expiration of [*], it will not make, have made, use, sell, offer to sell, importfor sale or import any product in the Excluded Field Covered by [*] in the Roche Territory, and export Licensed Compounds and Licensed Products in the Field in the Royalty Territory. (b) it will not grant to any Third Party any right or license under the Prothena Technology, an exclusive (subject to Prothena’s and its Affiliates’ retained rights to conduct Development activities under this Agreement) license, subject to the sharing of Profit and Loss as set forth in Section 9.3, with [*] the right to grant sublicenses in accordance with Section 2.3, to Develop, make, have made, use, sell, offer to sell, import, and export Licensed Compounds included for sale or import any product in the Jointly Funded Product/Indications, and such Jointly Funded Product/Indications, in the Excluded Field in the Shared Roche Territory; provided, however, that the foregoing license shall be co-exclusive (with Prothena and its Affiliates) with respect to co-Detailing, subject to Prothena exercising its Co-Detailing Option, during the time Prothena is co-Detailing in the Shared Territory. For clarity, the only Licensed Products in the Shared Territory are Jointly Funded Product/Indications. (cd) under If during the Prothena Trademarksterm of this Amended and Restated Worldwide Agreement, a non-exclusiveRoche or its Affiliate challenges the validity or enforceability in any jurisdiction of [*], royalty-free license, with then PDL shall have the right to grant sublicenses in accordance with Section 2.3, to use and display such Trademarks in connection with the Commercialization of Licensed Products in the Field in the Territory, as provided under and in accordance with Section 7.6 and the Co-Detailing Agreement. Notwithstanding the foregoing, the exclusive licenses granted by Prothena [*] to Roche under this Amended and Restated Worldwide Agreement to PDL Patents that include [*]. (e) Roche hereby covenants that it shall not, nor shall it cause any Affiliate or sublicensee to: (i) knowingly use or practice, directly or indirectly, any PDL Know-How or PDL Patents for any other purposes other than those expressly permitted by this Amended and Restated Worldwide Agreement or any other written agreements in the Field between the Parties currently in existence and not expressly superceded by this Amended and Restated Worldwide Agreement, or which may later be entered into by the Parties; (ii) market, promote, detail, sell or offer for sale Daclizumab, during the Commercialization Term, in any manner outside the scope of the licenses set forth in Section 2.5(a), including, in particular, for any use in the treatment of Autoimmune Indications or Other Indications; or (iii) use, develop, make, have made, sell, offer for sale or import Excluded Products in any manner outside the scope of the licenses set forth in Section 2.5(b). (f) PDL hereby covenants that it shall not, nor shall it cause any Affiliate or sublicensee to market, promote, detail, sell or offer for sale Daclizumab, during the Commercialization Term, in any manner outside the scope of the licenses set forth in Sections 2.1 shall be subject to any in-licenses to Prothena that may be nonexclusiveand 2.2.

License Grants to Roche. (a) Subject to the terms and conditions of this Amended and Restated Worldwide Agreement, Prothena hereby PDL grants to Roche and to Roche’s Affiliates, during the Commercialization Term, the exclusive (excluding even as to PDL) right and license under the PDL Know-How and PDL Patents to (i) market, promote, and detail Daclizumab in the Roche Territory solely for use in the Transplant Indications, and (ii) to sell and offer for sale Daclizumab in the Roche Territory under the Trademarks. In addition, PDL grants to Roche and to Roche’s Affiliates, the nonexclusive right under the PDL Know-How and PDL Patents to make, have made and import Daclizumab, but only to the extent reasonably necessary for Roche to carry out its rights and obligations under this Amended and Restated Worldwide Agreement. Roche may sublicense the rights and licenses granted to Roche under this Section 2.5, subject to PDL’s written consent, which consent PDL may not unreasonably withhold. It shall be deemed reasonable for PDL to withhold consent with respect to sublicense by Roche of any of the rights or licenses to any other entity that is [*CONFIDENTIAL TREATMENT REQUESTED] (in at least one [CONFIDENTIAL TREATMENT REQUESTED] with [CONFIDENTIAL TREATMENT REQUESTED]):), or [CONFIDENTIAL TREATMENT REQUESTED] in a [CONFIDENTIAL TREATMENT REQUESTED] any [CONFIDENTIAL TREATMENT REQUESTED] for the [CONFIDENTIAL TREATMENT REQUESTED] of any [CONFIDENTIAL TREATMENT REQUESTED]. Notwithstanding the preceding sentence, Roche and its Affiliates may use Third Party distributors in accordance with their customary practices. All sublicenses granted by Roche or its Affiliates of the licenses set forth in this Section 2.5(a) shall automatically terminate on the Reversion Effective Date or Put Right Effective Date. (ab) under Subject to the Prothena Technologyterms and conditions of this Amended and Restated Worldwide Agreement, an in particular the restrictions set forth in Section 3.1(b), PDL grants to Roche and to Roche’s Affiliates the exclusive (subject even as to Prothena’s PDL) right and its Affiliates’ retained rights to conduct Development activities under this Agreement), royalty-bearing license, with including the right to grant sublicenses sublicenses, under the PDL Know-How and PDL Patents to use, develop, make, have made, sell, offer for sale, and import the Excluded Products in accordance with the Roche Territory; provided, however that the license granted under this Section 2.32.5(b) under [CONFIDENTIAL TREATMENT REQUESTED] shall be nonexclusive. (c) PDL hereby covenants that, to Developuntil the expiration of [CONFIDENTIAL TREATMENT REQUESTED], it will not make, have made, use, sell, offer to sell, importfor sale or import any product in the Excluded Field Covered by [CONFIDENTIAL TREATMENT REQUESTED] in the Roche Territory, and export Licensed Compounds and Licensed Products in the Field in the Royalty Territory. (b) it will not grant to any Third Party any right or license under the Prothena Technology, an exclusive (subject to Prothena’s and its Affiliates’ retained rights to conduct Development activities under this Agreement) license, subject to the sharing of Profit and Loss as set forth in Section 9.3, with [CONFIDENTIAL TREATMENT REQUESTED] the right to grant sublicenses in accordance with Section 2.3, to Develop, make, have made, use, sell, offer to sell, import, and export Licensed Compounds included for sale or import any product in the Jointly Funded Product/Indications, and such Jointly Funded Product/Indications, in the Excluded Field in the Shared Roche Territory; provided, however, that the foregoing license shall be co-exclusive (with Prothena and its Affiliates) with respect to co-Detailing, subject to Prothena exercising its Co-Detailing Option, during the time Prothena is co-Detailing in the Shared Territory. For clarity, the only Licensed Products in the Shared Territory are Jointly Funded Product/Indications. (cd) under If during the Prothena Trademarksterm of this Amended and Restated Worldwide Agreement, a non-exclusiveRoche or its Affiliate challenges the validity or enforceability in any jurisdiction of [CONFIDENTIAL TREATMENT REQUESTED], royalty-free license, with then PDL shall have the right to grant sublicenses in accordance with Section 2.3, to use and display such Trademarks in connection with the Commercialization of Licensed Products in the Field in the Territory, as provided under and in accordance with Section 7.6 and the Co-Detailing Agreement. Notwithstanding the foregoing, the exclusive licenses granted by Prothena [CONFIDENTIAL TREATMENT REQUESTED] to Roche under this Amended and Restated Worldwide Agreement to PDL Patents that include [CONFIDENTIAL TREATMENT REQUESTED]. (e) Roche hereby covenants that it shall not, nor shall it cause any Affiliate or sublicensee to: (i) knowingly use or practice, directly or indirectly, any PDL Know-How or PDL Patents for any other purposes other than those expressly permitted by this Amended and Restated Worldwide Agreement or any other written agreements in the Field between the Parties currently in existence and not expressly superceded by this Amended and Restated Worldwide Agreement, or which may later be entered into by the Parties; (ii) market, promote, detail, sell or offer for sale Daclizumab, during the Commercialization Term, in any manner outside the scope of the licenses set forth in Section 2.5(a), including, in particular, for any use in the treatment of Autoimmune Indications or Other Indications; or (iii) use, develop, make, have made, sell, offer for sale or import Excluded Products in any manner outside the scope of the licenses set forth in Section 2.5(b). (f) PDL hereby covenants that it shall not, nor shall it cause any Affiliate or sublicensee to market, promote, detail, sell or offer for sale Daclizumab, during the Commercialization Term, in any manner outside the scope of the licenses set forth in Sections 2.1 shall be subject to any in-licenses to Prothena that may be nonexclusiveand 2.2.