Mutual Freedom to Operate for Combination Inventions. [***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.
11.4.1 Pfizer hereby grants to Ideaya (i) during the term of this Agreement and (ii) perpetually contingent upon and effective as of Regulatory Approval for the commercial sale of the Combination, an irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent claims directed to the Combination in any patent application or patent owned or controlled by Pfizer which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, solely in order to practice such Combination for all purposes.
11.4.2 Ideaya hereby grants to Pfizer (i) during the term of this Agreement and (ii) perpetually contingent upon and effective as of Regulatory Approval for the commercial sale of the Combination, an irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent claims directed to the Combination in any patent application or patent owned or controlled by Ideaya which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, solely in order to practice such Combination for all purposes.
11.4.3 For clarity, the terms of this Section 10.4 do not provide Ideaya or Pfizer with any rights, title or interest or any license to the other Party’s background intellectual property which does not claim the Combination (i.e., intellectual property owned or licensed by either Party which does not constitute an Invention and does not claim the Combination) except as necessary to conduct the Study.
Mutual Freedom to Operate for Combination Inventions. (i) Lilly hereby grants to Athenex a non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent owned or controlled by Lilly which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, in order to practice such Combination for all purposes.
(ii) Athenex hereby grants to Lilly a non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent owned or controlled by Athenex which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, in order to practice such Combination for all purposes.
(iii) For clarity, the terms of this Section 10.4 do not provide Athenex or Lilly with any rights, title or interest or any license to the other Party’s background intellectual property which does not claim the Combination (i.e., intellectual property owned or licensed by either Party which does not constitute an Invention and does not claim the Combination) except as necessary to conduct the Study.
(iv) Notwithstanding the foregoing, any and all licenses granted under this Section shall terminate upon termination of this Agreement and any future agreement(s) the Parties may enter into related to the Combination.
Mutual Freedom to Operate for Combination Inventions. (i) Vaccinex hereby grants to Merck a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under any claims in any patent owned or controlled by Vaccinex that was filed or includes a priority claim to an application that was filed prior to the initiation of the Study (i.e., first dosing of the first patient in the Study), or issues from any patent applications filed at any time and relating to an invention conceived of and owned or controlled by Vaccinex prior to initiation of the Study, which claims (a) specifically recite a product combining, or a use or method of use of both the Vaccinex Compound or a Vaccinex Class Compound, on the one hand, and Merck Compound or an Merck Class Compound, on the other hand, and (b) have been supported, in the patent disclosure or during prosecution with the applicable patent authority, by filing of or reference to Clinical Data, to practice the Combination for all purposes.
(ii) Merck hereby grants to Vaccinex a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under any claims in any patent owned or controlled by Merck that was filed or includes a priority claim to an application that was filed prior to the initiation of the Study (i.e., first dosing of the first patient in the Study), or issues from any patent applications filed at any time and relating to an invention conceived of and owned or controlled by Merck prior to initiation of the Study, which claims (a) specifically recite a product combining, or a use or method of use of both the Vaccinex Compound or a Vaccinex Class Compound, on the one hand, and Merck Compound or an Merck Class Compound, on the one hand, and (b) have been supported, in the patent disclosure or during prosecution with the applicable patent authority, by filing of or reference to Clinical Data, to practice the Combination for all purposes. Note: Reference to “Merck” in this document refers to the Group of Companies affiliated with Merck KGaA, Darmstadt, Germany.
(iii) Each of Merck and Vaccinex represents to the other that, on or prior to the Effective Date, it has disclosed in writing to such other Party (a) any unpublished patent applications filed by such Party and pending as of the Effective Date or (b) any written invention disclosures received as of the Effective Date by an employee of such Party who is responsible for deciding whether to file patent ...
Mutual Freedom to Operate for Combination Inventions. (i) With respect to any patent owned or controlled by Vaximm at any time prior to the initiation of the Study (i.e., the first dosing of the first patient in the Study) until Study Completion, or issuing from any patent applications filed at any time and relating to an invention conceived of and owned or controlled by Vaximm prior to initiation of the Study until Study Completion (other than, in each case, an Invention), which patent specifically recites a product combining, or a use or method of use of both a Vaximm Class Compound and an Alliance Class Compound, Vaximm hereby grants to the Alliance a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up, transferable and sublicensable license under any particular claims in any such patents that specifically recite a product combining, or a use or method of use of both, a Vaximm Class Compound and an Alliance Class Compound, to use, manufacture, sell or otherwise exploit the Alliance Compound for use in a Combination for all purposes.
(ii) With respect to any patent owned or controlled by Pfizer and/or Merck at any time prior to the initiation of the Study (i.e., the first dosing of the first patient in the Study) until Study Completion, or issuing from any patent applications filed at any time and relating to an invention conceived of and owned or controlled by Pfizer and/or Merck prior to initiation of the Study until Study Completion (other than, in each case, an Invention), which patent specifically recites a product combining, or a use or method of use of both an Alliance Class Compound and a Vaximm Class Compound, each of Pfizer and/or Merck hereby grants to Vaximm a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up, transferable and sublicensable license under any particular claims in any such patents that specifically recite a product combining, or a use or method of use of both, an Alliance Class Compound and a Vaximm Class Compound, to use, manufacture, sell or otherwise exploit the Vaximm Compound for use in a Combination for all purposes.
(iii) Each of Alliance and Vaximm represents to the other that, on or prior to the Effective Date, it has disclosed in writing to such other Party (a-1) any patent applications filed by such Party, or (a-2) in the case of Vaximm any patent application filed by Vaximm’s licensor and licensed to Vaximm, and in each case pending as of the Effective Date, and (b) any written invention disclosures received before ...
Mutual Freedom to Operate for Combination Inventions. 10.4.1 Pfizer hereby grants to Ideaya (i) during the term of this Agreement and (ii) perpetually contingent upon and effective as of Regulatory Approval for the commercial sale of the Combination, an irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent claims directed to the Combination in any patent application or patent owned or controlled by Pfizer which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, solely in order to practice such Combination for all purposes.
10.4.2 Ideaya hereby grants to Pfizer (i) during the term of this Agreement and (ii) perpetually contingent upon and effective as of Regulatory Approval for the commercial sale of the Combination, an irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent claims directed to the Combination in any patent application or patent owned or controlled by Ideaya which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, solely in order to practice such Combination for all purposes.
10.4.3 For clarity, the terms of this Section 10.4 do not provide Ideaya or Pfizer with any rights, title or interest or any license to the other Party’s background intellectual property which does not claim the Combination (i.e., intellectual property owned or licensed by either Party which does not constitute an Invention and does not claim the Combination) except as necessary to conduct the Study. [***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly disclosed.
Mutual Freedom to Operate for Combination Inventions. 10.4.1 Sponsor hereby grants to Xxxxx a perpetual, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent owned or controlled by Sponsor which (a) covers an Invention under this Agreement and (b) claims the Combination, in order to practice such Combination for all purposes. For clarity, the foregoing license (a) is limited to claims of any such patent that cover the Combination only (and not any other compounds), (b) is solely intended to provide Lilly with the ability to include the Sponsor Compound on the label for the Lilly Compound, and (c) does not include any rights to make, use, sell, offer for sale or import the Sponsor Compound (other than including the Sponsor Compound on the label for the Lilly Compound).
10.4.2 Lilly hereby grants to Sponsor a non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent owned or controlled by Lilly which (a) covers an Invention under this Agreement and (b) claims the Combination, in order to practice such Combination for all purposes. For clarity, the foregoing license (a) is limited to claims of any such patent that cover the Combination only (and not any other compounds), (b) is solely intended to provide Sponsor with the ability to include the Lilly Compound on the label for the Sponsor Compound, and (c) does not include any rights to make, use, sell, offer for sale or import the Lilly Compound (other than including the Lilly Compound on the label for the Sponsor Compound).
10.4.3 For clarity, the terms of this Section 10.4 do not provide Lilly or Sponsor with any rights, title or interest or any license to the other Party’s background intellectual property which does not claim the Combination (i.e., intellectual property owned or licensed by either Party which does not constitute an Invention and does not claim the Combination) except as necessary to conduct the Study.
Mutual Freedom to Operate for Combination Inventions. 10.4.1. Company License to MSD. Company hereby grants to MSD [***].
10.4.2. MSD License to Company. MSD hereby grants to Company [***].
Mutual Freedom to Operate for Combination Inventions. 10.4.1 Sponsor hereby grants to Lilly a non-exclusive, worldwide, royalty- free, fully paid-up license, transferable and sublicensable, [***].
10.4.2 Lilly hereby grants to Sponsor a non-exclusive, worldwide, royalty- free, fully paid-up license, transferable and sublicensable, [***].
10.4.3 For clarity, the terms of this Section 10.4 do not provide Lilly or Sponsor with any rights, title or interest or any license to the other Party's background intellectual property which does not claim the Combination (i.e., intellectual property owned or licensed by either Party which does not constitute an Invention and does not claim the Combination) except as necessary to conduct the Study.
Mutual Freedom to Operate for Combination Inventions. 10.4.1 PDS License In Merck. PDS hereby grants to Merck a non-exclusive, worldwide, royalty-free. fully paid-up license, transferable and sublicensable, to any patent Controlled by PDS that (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination (the “PDS Background Patents”) ***; provided, however, that in no event shall Merck ***. *** Portions of this page have been omitted pursuant to a request for Confidential Treatment filled separately with the Commission.
Mutual Freedom to Operate for Combination Inventions. (i) Advaxis hereby grants to Merck a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent owned or controlled by Advaxis which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, in order to practice such Combination for all purposes.
(ii) Merck hereby grants to Advaxis a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, to any patent owned or controlled by Merck which (a) has a priority claim that is earlier than the initiation of the Study (i.e., first dosing of the first patient in the Study) and (b) claims the Combination, in order to practice such Combination for all purposes.
(iii) For clarity, the terms of this Section 10.4 do not provide Merck or Advaxis with any rights, title or interest or any license to the other Party’s background intellectual property which does not claim the Combination (i.e., intellectual property owned or licensed by either Party which does not constitute an Invention and does not claim the Combination) except as necessary to conduct the Study. Certain portions of this document have been marked “[C.I.]” to indicate that confidential treatment has been requested for such confidential information. The confidential portions have been omitted and submitted separately with the Securities and Exchange Commission.
