Sublicense Agreements. (a) Except as otherwise expressly set forth herein, Orthovita shall have no right to grant a sublicense under the license rights granted to Orthovita in Section 2.1 without Angiotech’s prior written consent. If applicable laws and/or regulations require Orthovita to grant a sublicense to its Agent in a country(ies) in the Territory to enable such Agent to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Licensed Field in accordance with this Agreement, then Orthovita shall notify the Joint Committee of such requirement. The Joint Committee shall determine in good faith whether Orthovita is required by applicable law and/or regulation to grant such sublicense for this limited purpose to such Agent, and if the Joint Committee determines that such limited sublicense is required, such limited sublicense agreement shall be subject to the following: (i) Orthovita shall promptly provide to Angiotech a copy of the applicable executed limited sublicense agreement, subject to applicable confidentiality restrictions; (ii) Orthovita’s execution and delivery of each such limited sublicense agreement does not in any way diminish, reduce or eliminate any of Orthovita’s obligations under this Agreement, and Orthovita remains liable for all such obligations; and (iii) Orthovita shall not receive cash or non-cash consideration for such limited sublicense. In addition, Orthovita shall obtain contractual undertakings from every such permitted sublicensee that provide that the rights of such permitted sublicensee shall terminate upon expiration or termination of this Agreement. For the avoidance of doubt, the foregoing shall not preclude Orthovita from appointing an Agent who does not need a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Licensed Field. (b) Except as otherwise expressly set forth herein, Angiotech shall have no right to grant a license under the Licensed Technology with respect to Angiotech-Branded CoStasis Products in the Non-Orthopedic Hemostat Field without Orthovita’s prior written consent. If applicable laws and/or regulations require Angiotech to grant a license to its Agent in a country(ies) in the Territory to enable such Agent to distribute, promote, market and/or sell Angiotech-Branded CoStasis Products in the Licensed Field in accordance with this Agreement, then Angiotech shall notify the Joint Committee of such requirement. The Joint Committee shall determine in good faith whether Angiotech is required by applicable law and/or regulation to grant such license for this limited purpose to such Agent and if the Joint Committee determines that such limited license is required, such limited license agreement shall be subject to the following: (i) Angiotech shall promptly provide to Orthovita a copy of the applicable executed limited license agreement, subject to applicable confidentiality restrictions; and (ii) Angiotech’s execution and delivery of each such limited license agreement does not in any way diminish, reduce or eliminate any of Angiotech’s obligations under this Agreement, and Angiotech remains liable for all such obligations. For the avoidance of doubt, the foregoing shall not preclude Angiotech from appointing an Agent who does not need a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Non-Orthopedic Hemostat Field. (c) For the avoidance of doubt, Angiotech shall have no right to grant a license (except for the licenses granted to Orthovita under this Agreement) under the Licensed Technology with respect to CoStasis Products in the Orthopedic Hemostat Field.
Appears in 2 contracts
Samples: License Agreement, License Agreement (Orthovita Inc)
Sublicense Agreements. Licensee may not license, distribute, or otherwise provide access to the Technology, either directly or indirectly, to any sublicensee, unless the identity of such sublicensee and the site where the sublicensed rights will be used have been approved (a) Except which approval shall not be withheld unless such proposed sublicensee is a competitor of INSA as otherwise expressly is further set forth hereinbelow) (vi), Orthovita shall have no right in writing by INSA and Perigene, and the sublicensee is made subject to grant a sublicense agreement, which agreement shall, among other things: (A) protect INSA’s and Perigene’s confidential information and Intellectual Property Rights in the Technology to at least the same degree as the terms and conditions of this Agreement; (B) require such sublicensee to comply fully with all applicable laws and regulations in any of its dealings with respect to the Technology; (C) prohibit such sublicensee from making any unauthorized or illegal use of the Technology, (D) contain a provision limiting INSA’s and Perigene’s liability under the license rights granted to Orthovita in Section 2.1 without Angiotech’s prior written consent. If applicable laws and/or regulations require Orthovita to grant a sublicense to its Agent in a country(ies) agreement in the Territory to enable such Agent to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories same manner limited herein; (E) be terminable by Licensee in conformance with the Licensed Field in accordance with termination provisions of this Agreement, then Orthovita shall notify (F) designate INSA and Perigene as a third party beneficiary of the Joint Committee sublicense agreement; and (G) at INSA’s Perigene’s option, automatically terminate upon the termination of such requirementthis Agreement. The Joint Committee shall determine in good faith whether Orthovita is required by applicable law and/or regulation to grant such sublicense for this limited purpose to such AgentFurther, and if the Joint Committee determines that such limited sublicense is required, such limited aforementioned form of sublicense agreement shall be subject to INSA’s and Perigene’s prior review and approval. If at any time Licensee becomes aware of a breach thereof by a sublicensee, Licensee shall be obligated to (1) notify INSA and Perigene immediately of such breach, and (2) fully enforce its termination rights thereunder. Licensee will pursue any and all legal and equitable remedies available to Licensee against any such sublicensee to the following: extent practicable under the circumstances and will also reasonably cooperate with INSA and Perigene in connection with any legal or equitable action INSA and Perigene may take against any such sublicensee. INSA and Perigene shall have the right to reject a proposed sublicensee only if such party is a competitor of either INSA or Perigene, in which case, for the rejection to be effective, INSA and Perigene must notify Licensee of such rejection in writing within ten (i10) Orthovita shall promptly provide business days after Licensee first identifies the proposed sublicensee in writing to Angiotech a copy INSA and Perigene. If Licensee disagrees with INSA and Perigene’s determination, it must so notify INSA and Perigene within five (5) business days after receiving INSA and Perigene’s written rejection, in which case, the respective Chief Executive Officers of the applicable executed limited sublicense agreement, subject parties will attempt to applicable confidentiality restrictions; (ii) Orthovita’s execution and delivery of each resolve such limited sublicense agreement does not in any way diminish, reduce or eliminate any of Orthovita’s obligations under this Agreement, and Orthovita remains liable for all such obligations; and (iii) Orthovita shall not receive cash or non-cash consideration for such limited sublicensedispute immediately. In addition, Orthovita shall obtain contractual undertakings from every such permitted sublicensee that provide that the rights event the Chief Executive Officers are unable to reach an agreement within ten (10) business days after Licensee’s notice of such permitted sublicensee shall terminate upon expiration or termination of this Agreement. For the avoidance of doubtdispute, the foregoing shall not preclude Orthovita from appointing an Agent who does not need matter will be submitted immediately to arbitration in a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories mutually agreeable location in the Licensed Field.
(b) Except as otherwise expressly set forth herein, Angiotech shall have no right to grant a license State of Nevada under the Licensed Technology with respect Rules of the American Arbitration Association. The arbitrator will be mutually selected by the parties using their best efforts to Angiotech-Branded CoStasis Products in the Non-Orthopedic Hemostat Field without Orthovita’s prior written consent. If applicable laws and/or regulations require Angiotech to grant a license to its Agent in a country(iesagree on such selection within five (5) in the Territory to enable such Agent to distributebusiness days or, promoteif they cannot agree, market and/or sell Angiotech-Branded CoStasis Products in the Licensed Field will be appointed in accordance with this Agreement, then Angiotech shall notify the Joint Committee of such requirementArbitration Rules within five (5) business days (or as soon as is possible by using best efforts). The Joint Committee shall determine in good faith whether Angiotech parties agree to take all steps reasonably necessary to conduct an expedited arbitration, including having a hearing within five (5) business days (or as soon as is required by applicable law and/or regulation to grant such license for this limited purpose to such Agent and if possible using best efforts), allowing no discovery, limiting the Joint Committee determines that such limited license is required, such limited license agreement shall be subject time of each party’s presentation to the following: arbitrator to one (i1) Angiotech shall promptly provide hour, and instructing the arbitrator to Orthovita reach a copy final determination within two (2) business days after conclusion of the applicable executed limited license agreement, subject to applicable confidentiality restrictions; and (ii) Angiotech’s execution and delivery of each such limited license agreement does not presentations. Judgment by the arbitrator may be entered in any way diminish, reduce or eliminate any of Angiotech’s obligations under this Agreement, and Angiotech remains liable for all such obligations. For the avoidance of doubt, the foregoing shall not preclude Angiotech from appointing an Agent who does not need a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Non-Orthopedic Hemostat Fieldcourt having jurisdiction thereof.
(c) For the avoidance of doubt, Angiotech shall have no right to grant a license (except for the licenses granted to Orthovita under this Agreement) under the Licensed Technology with respect to CoStasis Products in the Orthopedic Hemostat Field.
Appears in 1 contract
Sublicense Agreements. (a) Except as otherwise expressly set forth herein, Orthovita shall have no right to grant a sublicense under the license rights granted to Orthovita in Section 2.1 without Angiotech’s prior written consent. If applicable laws and/or regulations require Orthovita to grant a sublicense to its Agent in a country(ies) in the Territory to enable such Agent to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Licensed Field in accordance with this Agreement, then Orthovita shall notify the Joint Committee of such requirement. The Joint Committee shall determine in good faith whether Orthovita is required by applicable law and/or regulation to grant such sublicense for this limited purpose to such Agent, and if the Joint Committee determines that such limited sublicense is required, such limited sublicense agreement shall be subject to the following: (i) Orthovita shall promptly provide to Angiotech a copy of the applicable executed limited sublicense agreement, subject to applicable confidentiality restrictions; (ii) Orthovita’s execution and delivery of each such limited sublicense agreement does not in any way diminish, reduce or eliminate any of Orthovita’s obligations under this Agreement, and Orthovita remains liable for all such obligations; and (iii) Orthovita shall not receive cash or non-cash consideration for such limited sublicense. In addition, Orthovita shall obtain contractual undertakings from every such permitted sublicensee that provide that the rights of such permitted sublicensee shall terminate upon expiration or termination of this Agreement. For the avoidance of doubt, the foregoing shall not preclude Orthovita from appointing an Agent who does not need a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Licensed Field.
(b) Except as otherwise expressly set forth herein, Angiotech shall have no right to grant a license under the Licensed Technology with respect to Angiotech-Branded CoStasis Products in the Non-Orthopedic Hemostat Field without Orthovita’s prior written consent. If applicable laws and/or regulations require Angiotech to grant a license to its Agent in a country(ies) in the Territory to enable such Agent to distribute, promote, market and/or sell Angiotech-Branded CoStasis Products in the Licensed Field in accordance with this Agreement, then Angiotech shall notify the Joint Committee of such requirement. The Joint Committee shall determine in good faith whether Angiotech is required by applicable law and/or regulation to grant such license for this limited purpose to such Agent and if the Joint Committee determines that such limited license is required, such limited license agreement shall be subject to the following: (i) Angiotech shall promptly provide to Orthovita a copy of the applicable executed limited license agreement, subject to applicable confidentiality restrictions; and (ii) Angiotech’s execution and delivery of each such limited license agreement does not in any way diminish, reduce or eliminate any of Angiotech’s obligations under this Agreement, and Angiotech remains liable for all such obligations. For the avoidance of doubt, the foregoing shall not preclude Angiotech from appointing an Agent who does not need a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Non-Orthopedic Hemostat Field.
(c) For the avoidance of doubt, Angiotech shall have no right to grant a license (except for the licenses granted to Orthovita under this Agreement) under the Licensed Technology (i) with respect to CoStasis Products in the Orthopedic Hemostat Field or (ii) except as set forth in Section 2.2(b), with respect to CoStasis Products in the Non-Orthopedic Hemostat Field.
Appears in 1 contract
Samples: License Agreement (Orthovita Inc)
Sublicense Agreements. (a) Except as otherwise expressly set forth hereinEach Party shall, Orthovita shall have no right to grant in each agreement under which it grants a sublicense under the a license rights granted to Orthovita set forth in Section 2.1 without Angiotech’s 2.5.1 (each, a “Sublicense Agreement”), require the sublicensee to provide the following to the other Party if this Agreement terminates and to the Party that is a party to such Sublicense Agreement (“Sublicensor”) if such Sublicense Agreement terminates: (i) the assignment and transfer of ownership and possession of all Regulatory Filings and Regulatory Approvals held or possessed by such sublicensee (which assignment could also be directly to the Sublicensor prior written consent. If applicable laws and/or regulations require Orthovita to grant any such termination), and (ii) the assignment of, or a sublicense to freely sublicensable exclusive license to, all intellectual property controlled by such sublicensee that covers or embodies a Compound or Product or Companion Diagnostic or its Agent in a country(ies) in the Territory to enable such Agent to distributerespective use, promoteManufacture, marketsale, sell, offer for sale and/or import Products and/or Existing Accessories in the Licensed Field in accordance with this Agreement, then Orthovita shall notify the Joint Committee or importation and was created by or on behalf of such requirement. The Joint Committee shall determine in good faith whether Orthovita is required by applicable law and/or regulation to grant such sublicense for this limited purpose sublicensee during the exercise of its rights or fulfillment of its obligations pursuant to such Agent, and if the Joint Committee determines that such limited sublicense is required, such limited sublicense agreement Sublicense Agreement. Each Sublicense Agreement shall be subject to the following: applicable terms and conditions of this Agreement and any Third Party licenses sublicensed to the sublicensee. Sublicensor shall (ix) Orthovita shall promptly provide use reasonable efforts to Angiotech a copy procure the performance by any sublicensee of the applicable executed limited sublicense agreement, subject to applicable confidentiality restrictions; (ii) Orthovita’s execution and delivery terms of each such limited Sublicense Agreement, and (y) be responsible for any breach of this Agreement that is caused (directly or indirectly) by the performance (or failures to perform) of its sublicense. The grant of any such sublicense agreement does will not in any way diminish, reduce or eliminate any relieve Sublicensor of Orthovita’s its obligations under this Agreement, and Orthovita remains liable for all except to the extent they are satisfactorily performed by such obligations; and (iii) Orthovita shall not receive cash or non-cash consideration for such limited sublicensesublicensee. In addition, Orthovita shall obtain contractual undertakings from every such permitted sublicensee that provide that To the rights of such permitted sublicensee shall terminate upon expiration or termination of this Agreement. For the avoidance of doubt, the foregoing shall not preclude Orthovita from appointing an Agent who does not need extent Merck grants a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Licensed Field.
(b) Except as otherwise expressly set forth herein, Angiotech shall have no right to grant a license of any rights under the Purdue Licensed Technology Patents, Merck shall provide Endocyte with respect to Angiotech-Branded CoStasis Products in the Non-Orthopedic Hemostat Field without Orthovita’s prior written consent. If applicable laws and/or regulations require Angiotech to grant a license to its Agent in a country(ies) in the Territory to enable such Agent to distribute, promote, market and/or sell Angiotech-Branded CoStasis Products in the Licensed Field in accordance with this Agreement, then Angiotech shall notify the Joint Committee of such requirement. The Joint Committee shall determine in good faith whether Angiotech is required by applicable law and/or regulation to grant such license for this limited purpose to such Agent and if the Joint Committee determines that such limited license is required, such limited license agreement shall be subject to the following: (i) Angiotech shall promptly provide to Orthovita a copy of each Sublicense Agreement promptly after the applicable executed limited license agreementexecution thereof, and Endocyte shall have the right to provide such copy to Purdue, subject to applicable Purdue’s confidentiality restrictions; and (ii) Angiotech’s execution and delivery of each such limited license agreement does not in any way diminish, reduce or eliminate any of Angiotech’s obligations under this the Purdue Agreement, and Angiotech remains liable for all such obligations. For the avoidance of doubt, the foregoing shall not preclude Angiotech from appointing an Agent who does not need a sublicense to distribute, promote, market, sell, offer for sale and/or import Products and/or Existing Accessories in the Non-Orthopedic Hemostat Field.
(c) For the avoidance of doubt, Angiotech shall have no right to grant a license (except for the licenses granted to Orthovita under this Agreement) under the Licensed Technology with respect to CoStasis Products in the Orthopedic Hemostat Field.
Appears in 1 contract
Samples: Collaboration, Exclusive License and Companion Diagnostic Agreement (Endocyte Inc)