Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2). 2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions: (a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses. (b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term. (c) The official language of any sublicense agreement shall be English. (d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy. (e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission. 2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 4 contracts
Samples: Option and License Agreement (Ultragenyx Pharmaceutical Inc.), Option and License Agreement (Dimension Therapeutics, Inc.), Option and License Agreement (Dimension Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon Licensor hereby grants to Licensee the effectiveness of each Grant Date and right to enter into sublicensing agreements with Sublicensees, provided that Licensee has current exclusive rights thereto in the rights granted Territory being sublicensed pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited 2.1 and subject to the specific Licensed Indication covered by such license. The license following:
a. Any sublicense granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions a Sublicensee shall incorporate all of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsAgreement, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement which shall be English.
(d) Within […***…] after entering into binding upon each Sublicensee as if such Sublicensee were a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and party to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is shall collect and shall remain […***…] guarantee all payments due Licensor from Sublicensee(s). In each such sublicense, the Sublicensee will be prohibited from granting further sublicenses;
b. If Licensee becomes Insolvent, Licensor’s proportionate share of all payments then or thereafter due and owing to Licensee from its Sublicensees for the sublicense of the Patent Rights will, upon written notice from Licensor to any such Sublicensee, become payable directly to Licensor by Sublicensee for all the account of Licensee’s duties and obligations contained in this Agreement and for any act or omission ;
c. Licensee shall within thirty (30) days of: (a) execution, provide Licensor with a copy of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any each sublicense agreement granted by Licensee hereunder hereunder, and any amendments thereto or terminations thereof; and (b) receipt, summarize, and deliver copies of all reports due to a Third Party Licensee from Sublicensee(s); and
d. If this Agreement is terminated for any reason, Licensor shall survive termination have the sole option to (a) terminate any or all sublicense(s) and all rights granted thereunder, or (b) require Licensee to immediately assign all of its right, title, and interest to all sublicense(s) to Licensor, including the right to receive all income from the sublicense(s). Licensee shall, prior to execution of each sublicense, make the intended Sublicensee(s) aware of this Agreement in accordance with and subject to the terms of Section 6.6.2contingency.
Appears in 4 contracts
Samples: Exclusive License Agreement, Exclusive License Agreement, Exclusive License Agreement
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and 2.2.1 Corvus shall be entitled to sublicense (including through multiple tiers) the rights granted to it under Clause 2.1 above to any person with similar or greater financial resources and expertise as Corvus, provided such person is [***]. If Corvus or a Sublicensee wishes to grant a sublicense to any person which does not meet the above criteria then it shall not do so without Vernalis’s prior written consent (such consent not to be unreasonably withheld or delayed). Any person to which Corvus grants a sublicense and to which any further tiers of sublicense are granted, each pursuant to Section 2.1.4this Clause 2.2.1, Licensee’s rights to sublicense will shall be limited to a “Sublicensee”. In the specific Licensed Indication covered by such license. The license granted event that Corvus grants one or more sublicenses pursuant to Section 2.1.4 (if Clause 2.2.1, Corvus shall remain responsible for all of its obligations under this Agreement and when effective) is sublicensable by Licensee shall cause each Sublicensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions applicable [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. terms and conditions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right Agreement. If the acts or omissions of any Sublicensee cause Corvus to sublicense granted to Licensee under be in breach of this Agreement is subject to the following conditions:
Agreement, Corvus shall be responsible for such breach regardless of any remedy which either (a) Licensee Vernalis may grant sublicenses […***…] only pursuant to a written sublicense agreement with have against the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
Sublicensee or (b) In each sublicense agreement, Corvus may have against the Sublicensee must for breach of the sublicense. Any such permitted sublicenses shall be required consistent with and expressly made subject to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing Agreement. Corvus shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in provide a more limited territory, field of use, or term.
(c) The official language copy of any sublicense agreement shall be English.
(d) Within executed by Corvus or any Sublicensee to Vernalis within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with execution.
2.2.2 In the event of termination of this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.:
(ea) Licensee’s execution of a by Corvus pursuant to Clause 12.2.1 (material breach) or Clause 12.3 (termination at will) , with respect to any Vernalis Licensed Compound or Licensed Product, any sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and granted by Corvus pursuant to Clause 2.2.1 shall remain automatically terminate; or
(b) by Vernalis pursuant to Clause 12.2.1 (material breach), Clause 12.2.2 (challenge to IP) or Clause 12.2.3 (insolvency), Vernalis shall […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of ]. Any such act or omission[***].
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 4 contracts
Samples: License Agreement (Corvus Pharmaceuticals, Inc.), License Agreement (Corvus Pharmaceuticals, Inc.), License Agreement (Corvus Pharmaceuticals, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may The licenses granted to Tekmira in Section 2.1 include the right for Tekmira to grant sublicenses […***…] sublicenses, but only pursuant on a Tekmira Sublicensable Product-by-Tekmira Sublicensable Product basis, to a written sublicense agreement with Third Parties to Research, Develop and/or Commercialize Tekmira Products that are Tekmira Sublicensable Products. Tekmira shall require that the Sublicensee. Licensor must receive written notice as soon as practicable following execution terms of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply under its rights in this Agreement are fully in compliance with the terms and conditions of this Agreement and of the Alnylam Existing In-Licenses governing Alnylam’s rights under the Alnylam Licensed Technology.
(b) The licenses granted to Alnylam in Section 2.2(a), Section 2.2(b) and Section 2.2(c) include the same extent as Licensee has agreed and must acknowledge right for Alnylam to grant sublicenses in the Alnylam Field, but only on a Alnylam Sublicensable Product-by-Alnylam Sublicensable Product basis, to Third Parties to Research, Develop and/or Commercialize Alnylam Products that Licensor is an express third party beneficiary are Alnylam Sublicensable Products. Alnylam shall require that the terms of such any sublicense under its rights in this Agreement are fully in compliance with the terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termthis Agreement.
(c) Any sublicense granted by a Party hereunder shall be subject and subordinate to the terms and conditions of this Agreement and shall contain terms and conditions consistent with those in this Agreement. The official language sublicensing Party shall assume full responsibility for the performance of all obligations and observance of all terms herein under the licenses granted to it and will itself pay and account to the other Party for all payments due under such licenses by reason of any such sublicense. If a sublicensing Party becomes aware of a material breach of any sublicense agreement by a Sublicensee, the sublicensing Party shall be Englishpromptly notify the other Party of the particulars of same and take all reasonable efforts to enforce the terms of such sublicense.
(d) Within Unless otherwise provided in this Agreement, the sublicensing Party will notify the other Party within […***…Redacted – time period] days after entering execution of a sublicense entered into a sublicense, Licensor must receive hereunder and provide a copy of the fully executed sublicense written in agreement to the English language for Licensor’s records and other Party within the same time frame (with such reasonable redactions as the sublicensing Party may make, provided that such redactions do not include provisions necessary to share demonstrate compliance with Licensor’s licensors under the Existing Licenses. The copy requirements of this Agreement), which shall be treated as Confidential Information of the sublicense sublicensing Party under Article VI; and provided further that the other Party may be redacted disclose such agreement(s) to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted Third Parties under confidence if and to the extent that it impairs Licensorrequired in order to comply with such other Party’s (or any of its licensors’) ability to ensure compliance with contractual obligations under both this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyAgreement and Third Party agreements.
(e) Licensee’s execution Tekmira hereby waives the foregoing sublicensing restrictions and requirements of Section 2.2(c), Section 2.2(d) and this Section 2.3 with respect to the Alnylam Existing Sublicenses. In addition, to the extent that Alnylam as of the Effective Date has licensed or sublicensed any Patent or Know-How Controlled by Tekmira as of the Effective Date to any Third Party pursuant to any Alnylam Existing Sublicense, or granted any Third Party pursuant to any Alnylam Existing Sublicense any option to obtain a license or sublicense agreement under any Patent or Know-How Controlled by Tekmira, the rights of the applicable Third Party shall not be affected by this Agreement, and if such Third Party Develops or Commercializes Alnylam Products, then Tekmira will not relieve Licensee of any of its obligations under be entitled to milestone payments and royalties with respect thereto as set forth in this Agreement. Licensee is and shall remain […***…] Alnylam agrees that it will not grant any additional options, licenses or sublicenses under Alnylam Patents, Tekmira Combined Licensed Technology, UBC Patents or Category 1 Patents to Licensor for all AlCana to Research, Develop or Commercialize siRNA Products without the prior written consent of LicenseeTekmira or enter into any additional contractual obligations to indemnify AlCana as to AlCana’s duties and obligations contained in this Agreement and for any act practice of the Alnylam Patents, Tekmira Combined Licensed Technology, UBC Patents or omission of an Affiliate Category 1 Patents to Research, Develop or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionCommercialize siRNA Products.
2.4.3 Any sublicense agreement granted by Licensee hereunder (f) Notwithstanding Sections 2.3(a) and 2.3(b), either Party may utilize Permitted Contractors and Institutional Collaborators to a Research and/or Develop their respective Products, whether or not such Products have become Sublicensable Products; provided that (i) such Party does not grant any such Permitted Contractor or Institutional Collaborator any license to Commercialize Products that are not Sublicensable Products and (ii) no Party shall share any of the other Party’s Confidential Information with such Permitted Contractor or Institutional Collaborator unless such Third Party shall survive termination of this Agreement in accordance with have executed a binding confidentiality agreement containing reasonably customary terms and subject to the terms of Section 6.6.2conditions.
Appears in 3 contracts
Samples: Cross License Agreement, Cross License Agreement (TEKMIRA PHARMACEUTICALS Corp), Cross License Agreement (TEKMIRA PHARMACEUTICALS Corp)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each or all of its licensed rights under the Protiva Intellectual Property for any purposes within the Agricultural Field, but solely within the Agricultural Field; provided, however, that any sublicense agreement, the Sublicensee must granted by Licensee shall be required subject and subordinate to comply with the terms and conditions of this Agreement and shall contain terms and conditions consistent with those in this Agreement. Licensee shall assume full responsibility for the performance of all obligations and observance of all terms herein under the licenses granted to it. If Licensee becomes aware of a material breach of any sublicense by a Sublicensee, Licensee shall promptly notify Protiva of the particulars of same extent and take all reasonable efforts to enforce the terms of such sublicense. Any agreement between Licensee and the Sublicensee shall provide that such Sublicensee may only use the Confidential Information of Protiva in accordance with terms of this Agreement applicable to Licensee’s use of such Confidential Information and subject to provisions at least as Licensee has agreed stringent as those set forth in Article VI, and must acknowledge that Licensor is Protiva shall be an express third party beneficiary of such terms agreement, including provisions related to use and conditions under such disclosure of Confidential Information. Subject to the foregoing provisions of this Section 2.2(a), Sublicensees shall have the right to further sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. Protiva Intellectual Property in a more limited territory, field of use, or termthe Agricultural Field to Third Parties.
(cb) The official language Unless otherwise provided in this Agreement, Licensee shall notify Protiva within thirty (30) days after execution of any a sublicense agreement shall be English.
(d) Within […***…] after entering entered into a sublicense, Licensor must receive hereunder and provide a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a fully executed sublicense agreement will not relieve to Protiva within the same time, which shall be treated as Confidential Information of Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionArticle VI.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 3 contracts
Samples: Option Agreement, Option Agreement (Arbutus Biopharma Corp), License and Services Agreement (Arbutus Biopharma Corp)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. 2.6.1 The research license granted pursuant to Section 2.1.4 2.1 is sublicensable by Licensee (a) to Affiliates of Licensee and (b) to one Third Party Collaborator with respect to each Disease Indication; any other sublicenses to Third Party Collaborators or Third Parties of the research license granted pursuant to Section 2.1 requires Licensor’s prior written consent, which consent may not be unreasonably withheld, conditioned, or delayed. The license granted, if and when effective) applicable, pursuant to Section 2.3.4 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such . Any sublicense of the rights under this Section 2.6, whether to an Affiliate or Third Party and whether relating to a sublicense of rights under Section 2.1 or 2.3.4, must comply with the provisions of this Section 2.4 2.6 (including Section 2.4.22.6.2).
2.4.2 2.6.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses a sublicense to an Affiliate of Licensee; provided that (i) such sublicense must comply with the terms of this Section 2.6.2 (except to the extent such terms are limited to Third Party Sublicensees), including being granted pursuant to a written agreement and requiring the Sublicensee to comply with the applicable terms and conditions of this Agreement; (ii) Licensee must provide Licensor with written notice of any such sublicense within […***…] after entering into a sublicense, which notice will identify the Affiliate, the applicable Disease Indication, and the scope of the rights sublicensed; (iii) such sublicense must only remain in effect for as long as such sublicensee remains an Affiliate of Licensee; and (iv) without limiting Section 2.6.2(f) below, Licensee will be responsible for CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. any and all obligations of any such Affiliate as if such Affiliate were “Licensee” hereunder. If either of the ReGenX Licensors requires additional information, including a copy of the sublicense agreement, Licensee shall provide such information, including such copy, to Licensor.
(b) Licensee may only grant sublicenses pursuant to a written sublicense agreement with the Sublicensee. Licensee may grant a direct Sublicensee (as defined in Section 1.30(i) only) of the rights under Section 2.3.4 the right to grant further sublicenses [***]. For the avoidance of doubt, any further sublicenses granted by any Sublicensees must comply with the provisions of this Section 2.6 (including Section 2.6.2) to the same extent that Licensee would have to comply if Licensee were granting a sublicense directly to a Third Party (including the obligation of requiring the Sublicensee to comply with the applicable terms and conditions of this Agreement and providing Licensor must receive written notice as soon as practicable following execution with a copy of the sublicense). For clarity, Licensee is entitled to grant to a Sublicensee a sublicense with respect to any such sublicensesor all of the Disease Indications.
(bc) In each sublicense agreement, (i) the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed agreed, except to the extent that such terms and conditions do not relate to the specific rights granted to the Sublicensee pursuant to this Agreement (e.g., obligations related to a Disease Indication that has not been sublicensed); and (ii) if such Sublicensee is a Third Party, such Sublicensee must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(cd) The official language of any sublicense agreement shall be English.
(de) Within […***…] after entering into a sublicensesublicense with a Third Party Sublicensee, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing LicensesReGenX Licensors. The copy of the sublicense may be redacted to exclude confidential information of Licensee or the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensorsthe ReGenX Licensors’) ability to ensure compliance with this Agreement; provided that, if any either of Licensor’s licensors require the ReGenX Licensors requires a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(ef) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 3 contracts
Samples: License Agreement (Voyager Therapeutics, Inc.), License Agreement (Voyager Therapeutics, Inc.), License Agreement (Voyager Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon Takeda shall have the effectiveness of each Grant Date and right to grant sublicenses through multiple tiers with respect to the rights granted pursuant licensed to Takeda under Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee 6.1 to any Affiliates or Third Parties; provided that any such sublicense must comply Affiliate of Takeda solely in accordance with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses Sections 6.2.1 through 6.2.5. Takeda […***…] only pursuant with respect to the rights licensed to Takeda under Section 6.1 to any Third Party [***] of Orexigen, which shall not to be unreasonably withheld, conditioned, or delayed. In the event Orexigen consents to the grant of such a written sublicense agreement Sublicense, such Sublicense shall be granted solely in accordance with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any Sections 6.2.1 through 6.2.5:
6.2.1 such sublicenses.
(b) In each sublicense agreement, the Sublicensee must Sublicense shall refer to this Agreement and shall be required subordinate to comply and consistent with the terms and conditions of this Agreement to the same extent as Licensee has agreed Agreement, and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to limit either the extent that it impairs Licensor’s ability of Takeda (individually or any through the activities of its licensors’Sublicensee) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any fully perform all of its obligations under this Agreement or Orexigen’s rights under this Agreement. Licensee is ;
6.2.2 in such Sublicense, the Sublicensee shall agree in writing to be bound to Takeda by terms and conditions substantially similar to, or less favorable to the Sublicensee than, the corresponding terms and conditions of this Agreement;
6.2.3 promptly after execution of the Sublicense, and specifically excluding any sublicenses granted to an Affiliate of Takeda, Takeda shall provide a complete and correct copy of such Sublicense to Orexigen;
6.2.4 Takeda shall remain […***…] to Licensor responsible for all the performance of Licensee’s duties and obligations contained in this Agreement and for any act or omission the performance of an Affiliate or its Sublicensees hereunder, and shall cause such Sublicensee that would be a breach to enable Takeda to comply with all applicable terms and conditions of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.Agreement; and
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party 6.2.5 each Sublicense shall survive terminate immediately upon the termination of this Agreement (in accordance whole or only with and respect to the rights that are subject to such Sublicense). For clarity, any references to Sublicense or Sublicensee in Sections 6.2.1 through 6.2.5 shall also mean sublicense or sublicensee, as the terms of Section 6.6.2case may, be with respect to Takeda’s Affiliates.
Appears in 3 contracts
Samples: Co Development, Co Promotion, Marketing and Licensing Agreement, Co Development, Co Promotion, Marketing and Licensing Agreement, Collaboration Agreement (Orexigen Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited Prior to the specific Licensed Indication covered fourth (4th) anniversary of the Initial Sale Date, Purchaser shall not sublicense or (except as permitted by such license. The license granted pursuant Section 10.1 with respect to Section 2.1.4 (if and when effectivethe sale of substantially all of the stock or assets of the Purchaser or any merger, consolidation or similar transaction involving Purchaser) is sublicensable by Licensee to assign any Affiliates or Third Parties; provided that any such sublicense must comply with of the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense licenses granted to Licensee Purchaser under this Agreement is Agreement, without Reliant’s prior written consent, which may be granted or withheld in Reliant’s sole discretion. From and after the fourth (4th) anniversary of the Initial Sale Date, and subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement, Purchaser may sublicense or assign any of the licenses granted to Purchaser under this Agreement to one or more third parties; provided, however, that Reliant’s prior written consent shall be required for any sublicense or (unless otherwise permitted by Section 10.1 with respect to the sale of substantially all of the stock or assets of the Purchaser or any merger, consolidation or similar transaction involving Purchaser) assignment of the license granted under Section 2.6(a)(iii), which consent Reliant may withhold only in the event and for so long as Reliant is unable to obtain any consent of Lilly required under the Lilly Agreement (which Reliant shall use commercially reasonable efforts to obtain) to permit such sublicense or assignment. Any such permitted sublicense or assignment granted by Purchaser shall be subject in all respects to the same extent as Licensee has agreed terms and must acknowledge conditions contained in this Agreement, and Purchaser shall remain primarily liable and shall be responsible for ensuring that Licensor is an express third party beneficiary of any permitted sublicensees and/or assignees comply with all such terms and conditions under conditions. Any such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written immediately terminate in the English language for Licensor’s records and to share with Licensor’s licensors event the license grant under the Existing Licenses. The copy of the which such sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (is granted or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject otherwise derived terminates pursuant to the terms of this Agreement and any such assigned license shall terminate in the event such license grant terminates pursuant to the terms of this Agreement. Notwithstanding the foregoing, Purchaser shall at all times have the right to grant sublicenses in connection with contract manufacturing, contract research and development, and similar arrangements under which Purchaser engages third parties to perform services for Purchaser in furtherance of Purchaser’s exercise of its rights and performance of its obligations hereunder (it being agreed that, during such time as Purchaser is subject to the Detailing requirements under Section 6.6.27.9(b), Purchaser shall not have the right to engage any contract sales organization or other third party to perform any such Detailing requirements in lieu of the Purchaser (including, without limitation, pursuant to a co-promotion or similar arrangement).
Appears in 3 contracts
Samples: Asset Purchase Agreement (Reliant Pharmaceuticals, Inc.), Asset Purchase Agreement (Reliant Pharmaceuticals, Inc.), Asset Purchase Agreement (Reliant Pharmaceuticals, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] * only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses. ****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] * after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] * to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 3 contracts
Samples: Option and License Agreement (REGENXBIO Inc.), Option and License Agreement (REGENXBIO Inc.), Option and License Agreement (REGENXBIO Inc.)
Sublicensing. 2.4.1 Upon the effectiveness 6.1 Licensee may sublicense any and all rights licensed hereunder provided that Licensee notifies University in writing and provides University with a copy of each Grant Date sublicense agreement and each amendment thereto within *** days after their execution. Licensee shall have the right to grant sublicensing rights to Sublicensees.
6.2 Licensee shall not grant sublicenses to the rights granted pursuant hereunder for *** or solely ***.
6.3 Licensee shall require that any agreement granting a third party rights to Section 2.1.4the Patent Rights:
(i) be consistent with the terms, conditions and limitations of this Agreement;
(ii) contain the Sublicensee’s acknowledgment of the disclaimer of warranty and limitation on University’s liability, as provided by Article 10 below;
(iii) shall require Sublicensee to indemnify University for any actions of Sublicensee(s);
(iv) provide Licensee the right to assign its rights under the sublicense to University in the event that this Agreement terminates; and
(v) comply with Sections 2.4, 2.5, 13.10, 13.11 and 13.12 of this Agreement.
6.4 Licensee shall require compliance of the applicable terms of this Agreement by each of its Sublicensees under each sublicense agreement.
6.5 If Licensee has exercised the Option, then after the *** of the Effective Date, a party shall provide written notice to the other party of any request made by a third party for a sublicense to develop a Proposed Product in a specific indication not being developed by Licensee and in the territory of ***, within *** of receiving such third party request. For purposes of this Agreement, *** will be considered as a single indication.
6.5.1 In the event that such Proposed Product has not been identified in a Progress Report as under development, in the specific indication requested, then to the extent that such third party is requesting sublicense rights for such Proposed Product in ***, within *** of receiving from or providing to University such written notice of a third party request for a sublicense, Licensee shall elect one of the following options:
(i) provide University with written notice in the form of a Progress Report that Licensee, Affiliate or Sublicensee of either of the foregoing has initiated commercially reasonable efforts to develop, make, use and sell a Licensed Product in the specific indication and *** requested by such third party that is essentially the same as or would commercially compete with the Proposed Product; or
(ii) provide University with written notice in the form of a Progress Report that Licensee, Affiliate or Sublicensee of either of the foregoing has plans to initiate commercially reasonable efforts, within *** of the date said written notice is due University, to develop, make, use and sell a Licensed Product in the specific indication and *** requested by such third party that is essentially the same as or would commercially compete with the Proposed Product; or
(iii) begin good faith negotiations with such third party to sublicense Licensee’s rights in the Patent Rights that are necessary or commercially justifiable for such third party to sublicense will be limited to make, use and sell Proposed Product in the specific Licensed Indication covered indication *** requested by such license. The third party; or
(iv) grant back to University limited rights in the Patent Rights under this Agreement for the sole purpose of allowing University to license granted pursuant the Patent Rights that are necessary or commercially justifiable for such third party to make, use and sell Proposed Product in the specific indication and *** requested by such third party.
(v) As used in this Agreement, *** shall be defined *** categorized as “***” by the ***, which may be found at *** or other similar webpage.
6.5.2 If Licensee elects to negotiate with prospective Sublicensee for a sublicense to develop, make, use and sell the Proposed Product as provided for in Section 2.1.4 6.5.1 (if and when effective) is sublicensable by iii), Licensee shall make a good faith effort to any Affiliates or Third Parties; provided that any such sublicense must comply complete negotiations with the provisions prospective Sublicensee within *** from the date on which it began negotiations (the “Negotiation Period”). For the purposes of this Section 2.4 6.5.2, Licensee shall have made a good faith effort to complete negotiations if it has offered a sublicense to the prospective Sublicensee the terms of which include:
(including Section 2.4.2)i) reasonable financial terms taking into account the field in which the sublicense is being offered and Licensee’s obligations to University pursuant to this Agreement,
(ii) minimum performance requirements which would not be unreasonably burdensome upon the prospective Sublicensee, and
(iii) non-financial terms which are consistent with Licensee’s obligations to University under this Agreement.
2.4.2 The right to sublicense granted to 6.5.3 Within *** of the end of the *** Negotiation Period, Licensee under this Agreement is subject to the following conditionsshall:
(i) provide University a copy of the fully executed sublicense with such third party, or
(ii) meet with University representatives and provide documentation of reasons that (a) Licensee may grant sublicenses […***…] only pursuant and/or such third party chose not to a written sublicense agreement proceed with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
good faith negotiation or (b) In each sublicense agreement, the Sublicensee must be required to comply with the terms negotiations between Licensee and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express such third party beneficiary of failed.
6.5.4 In the event that Licensee elects to negotiate with prospective Sublicensee for a sublicense to develop, make, use and sell the Proposed Product as provided for in Section 6.5.1 (iii), Licensee fails to make a good faith effort as required by Section 6.5.2 and such terms third party still desires to develop, make use and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. sell Proposed Product in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written specific indication which is not being developed by Licensee and in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy territory of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicenseLeast Developed Countries, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of immediately grant back to University limited rights in its obligations rights in the Patent Rights under this Agreement. Licensee is and shall remain […***…] to Licensor Agreement for all the sole purpose of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of University licensing such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject rights to the terms of Section 6.6.2third party.
Appears in 2 contracts
Samples: License Agreement (Immune Design Corp.), License Agreement (Immune Design Corp.)
Sublicensing. 2.4.1 Upon Licensor hereby grants to Licensee the effectiveness of each Grant Date and right to enter into sublicensing agreements with Sublicensees, provided that Licensee has current exclusive rights thereto in the rights granted Territory being sublicensed pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited 2.1 and subject to the specific Licensed Indication covered by such license. The license following:
a. Any sublicense granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions a Sublicensee shall incorporate all of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsAgreement, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement which shall be English.
(d) Within […***…] after entering into binding upon each Sublicensee as if such Sublicensee were a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and party to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is shall collect and shall remain […***…] guarantee all payments due Licensor from Sublicensee(s). In each such sublicense, the Sublicensee will be prohibited from granting further sublicenses.
b. If Licensee becomes Insolvent, Licensor’s proportionate share of all payments then or thereafter due and owing to Licensee from its Sublicensees for the sublicense of the Patent Rights will, upon notice from Licensor to any such Sublicensee, become payable directly to Licensor by Sublicensee for all the account of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any c. Licensee shall within thirty (30) days of: (a) execution, provide Licensor with a copy of each sublicense agreement granted by Licensee hereunder hereunder, and any amendments thereto or terminations thereof; and (b) receipt, summarize and deliver copies of all reports due to a Third Party Licensee from Sublicensee(s).
d. If this Agreement is terminated for any reason, Licensor shall survive termination have the sole option to (a) terminate any or all sublicense(s) and all rights granted thereunder, or (b) require Licensee to immediately assign all of its right, title, and interest to all sublicense(s) to Licensor, including the right to receive all income from the sublicense(s). Licensee shall, prior to execution of each sublicense, make the intended Sublicensee(s) aware of this Agreement in accordance with and subject to the terms of Section 6.6.2contingency.
Appears in 2 contracts
Samples: Exclusive License Agreement, Exclusive License Agreement
Sublicensing. 2.4.1 Upon Seelos shall have the effectiveness of each Grant Date and right to grant sublicenses (collectively “Sublicenses”) under the rights licenses granted to Seelos pursuant to Section 2.1.42.1; provided, Licensee’s rights to sublicense will be limited to however, that the specific Licensed Indication covered granting by such license. The license granted pursuant to Section 2.1.4 (if Seelos of a Sublicense shall not relieve Seelos of any of its obligations hereunder and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided provided, further, that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The Seelos’ right to sublicense granted to Licensee under this Agreement is grant a Person a Sublicense shall be subject to the following conditions:
condition that Seelos shall advise such Sublicensee of the restrictions set forth in this Agreement with respect to the rights sublicensed to such Sublicensee, shall include within such Sublicense express provisions binding the Sublicensee to all of the duties, obligations, restrictions and acknowledgements hereunder of Seelos (with Licensor being an express third-party beneficiary thereof to the extent (a) Licensee may grant sublicenses […***…] only pursuant to that any Sublicense is a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
a CEA Licensed Products and (b) In of audit rights and records retention, in each sublicense agreementcase unless upon Company’s request Licensor consents in a particular instance to waive such requirement that Licensor be an express third-party beneficiary, which consent Licensor will consider in good faith and not unreasonably withhold or delay) and stating that the Sublicense shall automatically terminate upon the expiration or earlier termination of this Agreement. Seelos shall reasonably promptly deliver to Licensor a true and complete copy of the relevant portions of such Sublicense, provided that Seelos may redact any financial information and any sensitive or proprietary information that is not necessary to ascertain such Sublicensee’s compliance with the terms and conditions of this Agreement. Notwithstanding the foregoing sentence, it is not required that a Sublicense include provisions for the Sublicensee must be required to pay royalties or make milestone payments or other payments directly to Licensor or to provide royalty reports directly to Licensor. Seelos shall require that all of its Sublicensees shall comply with the terms and conditions of this Agreement (as applicable to them) and Seelos shall be and remain fully responsible to Licensor for the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of compliance by such Sublicensees with the terms and conditions of this Agreement (as applicable to them) as if the Sublicensee were Seelos hereunder. In addition, Licensor hereby agrees that, for the express benefit of each Sublicensee whose Sublicense would be automatically terminated as a result of termination of this Agreement under Section 12.2 for Seelos’ breach (so long as such breach does not arise from any act or omission of such Sublicensee) or as a result of termination of this Agreement under Section 12.3 for Seelos’ bankruptcy or similar event, upon such termination Licensor shall negotiate in good faith with such Sublicensee to enter into a new direct license agreement with such Sublicensee which would contain terms and conditions that are substantially the same as those contained in the sublicense agreement; provided that nothing agreement subject to the following: (a) such direct license agreement shall prevent Licensee carry forward any limitations or restrictions from granting sublicenses Seelos’ full rights which had been effected in such Sublicense (e.g., limitations or restrictions as to duration, type of more limited scope than Licensee’s rightsLicensed Product, e.g. in a more limited method of administration, type of commercialization right, geographic territory, field of use, or termetc.
), (b) if the rights granted by Seelos to such Sublicensee and another Sublicensee had been inconsistent (e.g., the two Sublicensees’ exclusive territories in fact overlapped), Licensor shall be entitled to negotiate so as to cause the elimination in the direct license agreements of any such inconsistency, and (c) The official language such direct license agreement, together with any and all other direct license agreements entered into with other former Sublicensees on account of any sublicense agreement this Section 2.2, shall be English.
(d) Within […***…] after entering into a sublicense, afford to Licensor must receive a copy of the sublicense written in economic benefit as to the English language for Licensor’s records milestone payments and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted royalties to the extent that it impairs Licensor’s (or any such milestone payment and royalties have a proportionate relation to such Sublicensees’ rights and arise after the date of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach termination of this Agreement as if this Agreement were still in effect, provided that Licensor shall not be entitled to any such milestone payment or royalties payment to the extent that Licensor already has received or recovered or later receives and recovers from, on behalf of or because of Seelos or its successors or assigns any damages, settlement amounts or other amounts for or otherwise in connection with such milestone payments and royalties. As an illustration of subsection (c): if there are four such Sublicensees, the obligations of the former Sublicensees under the four (or, as the case may be, fewer) direct license agreements to pay a result particular milestone payment shall in the aggregate, somehow, equal the amount of the particular milestone payment to the extent to which such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder milestone has a proportionate relation to a Third Party shall survive such Sublicensees’ rights and arises after the date of termination of this Agreement as if this Agreement were still in accordance effect. (As an example, for clarity: the rights of a Sublicensee whose rights are limited to CEA Licensed Products in South America would not “have a proportionate relation” to any of the milestones hereunder except the ones identified in Section 5.3(c)(iii) and Section 5.3(c)(vii).) As another illustration of subsection (b): if there are four such Sublicensees, the obligations of the former Sublicensees under the four (or, as the case may be, fewer) direct license agreements to pay royalties shall be based on the same royalty tiers as set forth in this Agreement, and as to each such direct license agreement the achievement of the applicable tier threshold shall be based not on such former Sublicensee’s Net Sales alone, but rather on the combined Net Sales of all former Sublicensees under their direct license agreements plus the Net Sales of Licensed Products under any other direct license agreement which Licensor may at any time enter into with anyone else (e.g., if the direct license agreements with former Sublicensees did not in the aggregate cover all geographies in the world). Except for Sublicenses as expressly allowed herein, Seelos acknowledges that it has no right to, and subject agrees not to purport to, grant to anyone a sublicense under the terms of Section 6.6.2Licensor IP.
Appears in 2 contracts
Samples: License Agreement (Apricus Biosciences, Inc.), License Agreement (Apricus Biosciences, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may The licenses granted to Tekmira in Section 2.1 include the right for Tekmira to grant sublicenses […***…] sublicenses, but only pursuant on a Tekmira Sublicensable Product-by-Tekmira Sublicensable Product basis, to a written sublicense agreement with Third Parties to Research, Develop and/or Commercialize Tekmira Products that are Tekmira Sublicensable Products. Tekmira shall require that the Sublicensee. Licensor must receive written notice as soon as practicable following execution terms of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply under its rights in this Agreement are fully in compliance with the terms and conditions of this Agreement and of the Alnylam Existing In-Licenses governing Alnylam’s rights under the Alnylam Licensed Technology.
(b) The licenses granted to Alnylam in Section 2.2(a), Section 2.2(b) and Section 2.2(c) include the same extent as Licensee has agreed and must acknowledge right for Alnylam to grant sublicenses in the Alnylam Field, but only on a Alnylam Sublicensable Product-by-Alnylam Sublicensable Product basis, to Third Parties to Research, Develop and/or Commercialize Alnylam Products that Licensor is an express third party beneficiary are Alnylam Sublicensable Products. Alnylam shall require that the terms of such any sublicense under its rights in this Agreement are fully in compliance with the terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termthis Agreement.
(c) Any sublicense granted by a Party hereunder shall be subject and subordinate to the terms and conditions of this Agreement and shall contain terms and conditions consistent with those in this Agreement. The official language sublicensing Party shall assume full responsibility for the performance of all obligations and observance of all terms herein under the licenses granted to it and will itself pay and account to the other Party for all payments due under such licenses by reason of any such sublicense. If a sublicensing Party becomes aware of a material breach of any sublicense agreement by a Sublicensee, the sublicensing Party shall be Englishpromptly notify the other Party of the particulars of same and take all reasonable efforts to enforce the terms of such sublicense.
(d) Within Unless otherwise provided in this Agreement, the sublicensing Party will notify the other Party within […***…] days after entering execution of a sublicense entered into a sublicense, Licensor must receive hereunder and provide a copy of the fully executed sublicense written in agreement to the English language for Licensor’s records and other Party within the same time frame (with such reasonable redactions as the sublicensing Party may make, provided that such redactions do not include provisions necessary to share demonstrate compliance with Licensor’s licensors under the Existing Licenses. The copy requirements of this Agreement), which shall be treated as Confidential Information of the sublicense sublicensing Party under Article VI; and provided further that the other Party may be redacted disclose such agreement(s) to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted Third Parties under confidence if and to the extent that it impairs Licensorrequired in order to comply with such other Party’s (or any of its licensors’) ability to ensure compliance with contractual obligations under both this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyAgreement and Third Party agreements.
(e) Licensee’s execution Tekmira hereby waives the foregoing sublicensing restrictions and requirements of Section 2.2(c), Section 2.2(d) and this Section 2.3 with respect to the Alnylam Existing Sublicenses. In addition, to the extent that Alnylam as of the Effective Date has licensed or sublicensed any Patent or Know-How Controlled by Tekmira as of the Effective Date to any Third Party pursuant to any Alnylam Existing Sublicense, or granted any Third Party pursuant to any Alnylam Existing Sublicense any option to obtain a license or sublicense agreement under any Patent or Know-How Controlled by Tekmira, the rights of the applicable Third Party shall not be affected by this Agreement, and if such Third Party Develops or Commercializes Alnylam Products, then Tekmira will not relieve Licensee of any of its obligations under be entitled to milestone payments and royalties with respect thereto as set forth in this Agreement. Licensee is and shall remain […***…] Alnylam agrees that it will not grant any additional options, licenses or sublicenses under Alnylam Patents, Tekmira Combined Licensed Technology, UBC Patents or Category 1 Patents to Licensor for all AlCana to Research, Develop or Commercialize siRNA Products without the prior written consent of LicenseeTekmira or enter into any additional contractual obligations to indemnify AlCana as to AlCana’s duties and obligations contained in this Agreement and for any act practice of the Alnylam Patents, Tekmira Combined Licensed Technology, UBC Patents or omission of an Affiliate Category 1 Patents to Research, Develop or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionCommercialize siRNA Products.
2.4.3 Any sublicense agreement granted by Licensee hereunder (f) Notwithstanding Sections 2.3(a) and 2.3(b), either Party may utilize Permitted Contractors and Institutional Collaborators to a Research and/or Develop their respective Products, whether or not such Products have become Sublicensable Products; provided that (i) such Party does not grant any such Permitted Contractor or Institutional Collaborator any license to Commercialize Products that are not Sublicensable Products and (ii) no Party shall share any of the other Party’s Confidential Information with such Permitted Contractor or Institutional Collaborator unless such Third Party shall survive termination of this Agreement in accordance with have executed a binding confidentiality agreement containing reasonably customary terms and subject to the terms of Section 6.6.2conditions.
Appears in 2 contracts
Samples: Cross License Agreement (Alnylam Pharmaceuticals, Inc.), Cross License Agreement (Alnylam Pharmaceuticals, Inc.)
Sublicensing. 2.4.1 Upon If the effectiveness license grant under Section 2.1 is exclusive, Licensee has the right to grant Sublicense Agreements under the Licensed Patent Rights consistent with the terms of each Grant Date and the Agreement, subject to the following: Each Sublicensee, including an Affiliate extended rights granted hereunder pursuant to Section 2.1.42.2, Licensee’s rights must agree in writing to sublicense will be limited to bound, for the specific Licensed Indication covered benefit of Licensor, by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement the following Sections of these Terms and Conditions: 2.1(b), 2.3, 2.4, 3.4 (to the same extent as applicable to the Sublicensee or sub-sublicensee), 4, 5, 6, 7.5, 8, 9, 10, 12, 13, 14, 16, 17, and 18 (for notice to Licensor). To the extent that Licensee has agreed permits a Sublicensee to grant further sub-tier sub-sublicense agreements, then each such sub-sublicensee shall be considered a “Sublicensee” under the Agreement and must acknowledge also agree in writing to be bound, for the benefit of Licensor, by the above-referenced Sections. Each such Sublicense Agreement shall indicate that Licensor is an express a third party beneficiary of such the terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses required by Section 2.3(a), and is entitled to enforce the same. Survival or not of more limited scope than Licensee’s rights, e.g. Sublicensee rights in a more limited territory, field the event of use, or term.
(c) The official language termination of any sublicense agreement the Agreement shall be English.
governed by Section 7.5(b) below. Licensee shall (d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs a Sublicensee is authorized by Licensor to grant further sublicenses, such Sublicensee shall) deliver to Licensor a true, complete, and correct copy of each Sublicense Agreement granted by Licensee, and any modification or termination thereof, within thirty (30) days following the applicable execution, modification, or termination of such Sublicense Agreement, including an English translation if the Sublicense Agreement is not written in English. All such copies shall be considered Confidential Information of Licensee under the Agreement. Licensor’s (or any receipt of its licensors’) ability to ensure compliance with this Agreement; provided that, if such Sublicense Agreement will not constitute a waiver of any of Licensor’s licensors require a complete, unredacted copy of rights or Licensee’s obligations under the sublicenseAgreement. Notwithstanding any such Sublicense Agreement, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] primarily liable to Licensor for all of the Licensee’s duties and obligations contained in this Agreement the Agreement, and for any act or omission of an Affiliate or a Sublicensee that would be a breach of this the Agreement if performed or omitted by Licensee, and Licensee will be deemed to be a breach by Licensee of the Agreement unless Licensee complies with the remaining provisions of this paragraph. Each Sublicense Agreement will contain a right of termination by Licensee in the event that the Sublicensee breaches the payment obligations affecting Licensor or any other terms and conditions of the Sublicense Agreement that would constitute a breach of this the terms and conditions of the Agreement as a result of if such act or omission.
2.4.3 Any sublicense agreement granted acts were performed by Licensee hereunder (a “Sublicensee Breach”). In the event of a Sublicensee Breach, and if after a reasonable opportunity to cure as provided in any such Sublicense Agreement (not to exceed 30 days for a Third Party shall survive termination of this payment breach and 90 days for a non-payment breach), such Sublicensee fails to cure such Sublicensee Breach, then the Licensee will terminate the Sublicense Agreement within 30 days thereafter unless Licensor agrees in accordance with and subject to the terms of Section 6.6.2writing that such Sublicense Agreement need not be terminated.
Appears in 2 contracts
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only * pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] * after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licensesdirect and indirect licensors. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its direct or indirect licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s direct or indirect licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy. ****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] * to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: License Agreement (REGENXBIO Inc.), License Agreement (REGENXBIO Inc.)
Sublicensing. 2.4.1 Upon (a) Each Party shall have the effectiveness of right to grant sublicenses under the licenses granted to it, with respect to Century under Section 2.1, and with respect to CDI under Section 2.2, in each Grant Date and the rights granted pursuant case, to Section 2.1.4Third Parties (each, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effectivea “Sublicensee”) is sublicensable by Licensee to any Affiliates or Third Partiesthrough multiple tiers; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only a Third Party shall be pursuant to a written agreement and each sublicense agreement shall be subject to all relevant restrictions and limitations set forth in this Agreement. Each Party shall be responsible for each of its Sublicensees complying with the Sublicensee. Licensor must receive written notice as soon as practicable following execution all obligations of such Party under this Agreement that are applicable to sublicenses and any breach by a Sublicensee under any such sublicensessublicense shall be deemed to be a breach of such Party under this Agreement. Each Party shall notify the other Party in writing of the identity of Sublicensees without delay.
(b) In each If this Agreement is terminated for any reason other than by a Party pursuant to Section 9.6, then, at the option of any Sublicensee of a terminating Party not in default of the applicable sublicense agreement(or any provision of this Agreement applicable to such Sublicensee), a terminating Party shall use Commercially Best Efforts to execute a possible direct license arrangement with such Sublicensee under, and subject to the terms and conditions of, this Agreement.
(c) Century shall use Commercially Reasonable Best Efforts to include in any sublicense by Century or any Affiliate of Century to a Third Party (or any further sublicenses by the applicable Sublicensee) of any rights granted by CDI under Section 2.1 that the Sublicensee will grant to Century licenses to any Sublicensee Technology and licenses and rights of reference under any Regulatory Documentation on terms that are substantially similar to the licenses granted by CDI to Century in Section 2.1 (but with respect to outside the Territory) (replacing all references to the “Territory” under Section 2.1 with “outside the Territory”), which license must be required fully sublicensable to comply with CDI (through multiple tiers) pursuant to the terms and conditions of this Agreement Agreement. In such event, such Sublicensee Technology will be deemed Century Licensed Technology hereunder and included within the licenses granted to CDI hereunder. Notwithstanding any provision to the same extent as Licensee has agreed contrary, in the event Century obtains from the Sublicensee (a) licenses to any and must acknowledge that Licensor is an express third party beneficiary all Sublicensee Technology and (b) licenses and rights of reference under any Regulatory Documentation Owned or Controlled by Sublicensees (and its Affiliates), to Exploit the Licensed Products in the Field, Century shall ensure to make such terms licenses and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. rights sublicensable to CDI (through multiple tiers) to Exploit the Licensed Products in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be Englishthe Field outside the Territory.
(d) Within […***…] after entering into CDI shall use Commercially Reasonable Best Efforts to include in any sublicense by CDI to a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of Third Party (or any further sublicenses by the applicable Sublicensee, but such copy shall not be redacted ) of any rights granted by Century under Section 2.2 that the Sublicensee will grant to CDI licenses to any Sublicensee Technology and licenses and rights of reference under any Regulatory Documentation on terms that are substantially similar to the extent that it impairs Licensor’s licenses granted by Century to CDI in Section 2.2 (or any but with respect to the Territory) (replacing all references to the “outside the Territory” with “Territory”), which license must be fully sublicensable to Century (through multiple tiers) pursuant to the terms and conditions of its licensors’) ability to ensure compliance with this Agreement; provided that. In such event, if such Sublicensee Technology will be deemed Licensed Technology hereunder and included within the licenses granted to Century hereunder. Notwithstanding any provision to the contrary, in the event CDI will obtain from the Sublicensee (a) licenses to any and all Sublicensee Technology and (b) licenses and rights of Licensor’s licensors require a completereference under any Regulatory Documentation Owned or Controlled by Sublicensees (and its Affiliates), unredacted copy of to Exploit the sublicenseLicensed Products in the Field, Licensee CDI shall provide ensure to make such complete, unredacted copylicenses and rights sublicensable to Century (through multiple tiers) to Exploit the Licensed Products in the Field in the Territory.
(e) Licensee’s execution For purposes of a Sections 2.5(c) and 2.5(d), “Sublicensee Technology” means any and all Know-How and Patent Rights that such Sublicensee (and its Affiliates) controls by way of developing, generating, or inventing during the term of the applicable sublicense agreement will not relieve Licensee in the course of any activities for the Exploitation of its obligations under this Agreementthe Licensed Products or otherwise in the exercise of the sublicensed rights thereunder and that are necessary or useful for the Exploitation of the Licensed Products in the Field. Licensee is and shall remain […***…] to Licensor for all For the avoidance of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or doubt Sublicensee Technology includes Patent Rights that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach issued based on Know-How that is acquired by Sublicensee (and its Affiliates) by way of this Agreement as a result developing, generating, or inventing during the term of such act or omission.
2.4.3 Any the applicable sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination in the course of this Agreement activities for the Exploitation of the Licensed Products or otherwise in accordance with and subject to the terms exercise of Section 6.6.2the sublicensed rights during the term of the applicable sublicense agreement.
Appears in 2 contracts
Samples: License Agreement (Century Therapeutics, Inc.), License Agreement (Century Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee; ****. Licensor must receive written notice as soon as practicable following execution of any such sublicenses. Any further sublicenses granted by any Sublicensees (to the extent permitted hereunder) must comply with the provisions of this Section 2.4 ****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. (including Section 2.4.2) to the same extent as if Licensee granted such sublicense directly.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] * after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing LicensesReGenX Licensors. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensorsthe ReGenX Licensors’) ability to ensure compliance with this Agreement; provided that, if any either of Licensor’s licensors require the ReGenX Licensors requires a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] * to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: License Agreement (AveXis, Inc.), License Agreement (AveXis, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and 2.3.1 Licensee may sublicense the rights granted pursuant to it under Section 2.1.4, Licensee’s rights 2.1 (License Grants) through one or more tiers to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any one or more of its Affiliates or Third Parties; provided that Parties at any time (each Third Party to which sublicense is granted is hereinafter referred to as a “Sublicensee”). Any such sublicense must comply be in writing, and shall be consistent with the provisions terms of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to Agreement. In particular but without limitation, Licensee hereby covenants that any sublicense granted to Licensee under this Agreement is subject to the following conditions:
agreement(s) shall contain (a) covenants by the sublicensee for the benefit of Orion and Licensee may grant sublicenses […***…] only pursuant for such sublicense to a written sublicense agreement with observe and perform materially the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the same terms and conditions of as those set out for Licensee in this Agreement to the extent applicable; (b) license-back provisions consistent with those in Section 8.6 of this Agreement, under which any Sublicensee shall license all intellectual property rights, information and data in the scope of Section 8.6 directly to Orion; and (c) mechanisms for the reporting of Net Sales consistent with the terms of this Agreement, as well as grant Orion the right to audit the Net Sales of any Sublicensee.
2.3.2 Further, prior to and as a prerequisite for disclosing any of Orion’s Confidential Information to any potential Sublicensee, Licensee shall have such potential Sublicensee to execute and deliver to Orion a confidentiality agreement in the form attached hereto as Schedule 2.3.2 between such potential Sublicensee and Orion.
2.3.3 In the event that Licensee becomes aware of a material breach of any such sublicense by the Sublicensee, Licensee shall promptly notify Orion of the particulars of same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary use its commercially reasonable efforts to enforce the terms of such terms sublicense and conditions to cooperate with Orion if it chooses to take action to enforce such terms.
2.3.4 If Licensee does not initiate a suit or take other appropriate action that it has the initial right to initiate or take pursuant to Section 2.3.3 above, then Orion may, in its discretion and in its own name, after having notified the Licensee thereof in writing, initiate a suit or take other appropriate action. If required by the law of the forum, Licensee shall execute such authorizations under this Agreement or any sublicense agreements concluded hereunder as well as other legal papers that may be necessary or useful to establish legal standing for Orion to pursue a suit or other action against a Sublicensee, and to cooperate in the prosecution of such sublicense agreementsuit as may be reasonably requested by Orion; provided that nothing Orion shall prevent promptly reimburse all out-of-pocket expenses (including reasonable counsel fees and expenses) actually incurred by Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termconnection with such cooperation.
(c2.3.5 If this Agreement terminates for any reason, any Sublicensee shall, from the effective date of such termination, automatically become a direct licensee of Orion with respect to the rights originally sublicensed to the Sublicensee by Licensee; provided, however, that in no event shall Orion as a consequence of such termination incur any obligation(s) The official language towards a Third Party other than the grant of any a license consistent with the terms of Section 2.1 to the relevant Sublicensee, and provided further that such Sublicensee is not in breach of its sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy and such Sublicensee agrees in writing to comply with all of the sublicense written in terms of this Agreement and assumes the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy responsibilities of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted Licensee hereunder to the extent that applicable from the rights originally sublicensed to it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyfrom Licensee.
(e) Licensee’s execution of 2.3.6 Should Licensee enter into a sublicense agreement will not relieve Licensee after Orion has given notice of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed under Section 14.4, either in its entirety or omitted by Licenseeon a country-by-country and/or product-by-product basis, then such notice of breach shall be effective also against the relevant sublicensee and Licensee will be deemed any cure period for such breach shall continue with respect to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject sublicensee to the terms extent the sublicense relates to products and countries affected by the notice of Section 6.6.2breach. For purposes of clarity, such sublicensee shall not be entitled to restart the cure period.
Appears in 2 contracts
Samples: License Agreement (Baudax Bio, Inc.), License Agreement (Recro Pharma, Inc.)
Sublicensing. 2.4.1 Upon 2.2.1 LICENSEE will have the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted its rights under the License to Licensee LICENSEE Affiliates and to Third Parties only with Council’s prior written consent, such consent not to be unreasonably withheld, conditioned or delayed. The terms of any sublicense permitted under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to foregoing sentence will be set forth in a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply and fully consistent with the terms and conditions of this Agreement to Agreement, including in the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language case of any sublicensee obtaining sublicense agreement shall rights to Commercialize any Licensed Product, that such writing incorporates the terms of Sections 10.2.1, 12.4 and Article XI. With respect to all sublicenses granted under this Agreement, for purposes of determining whether any breach has occurred under this Agreement, the acts and omissions in relation to this Agreement of any sublicensee of LICENSEE hereunder will be English.
attributable to LICENSEE as though taken or omitted by LICENSEE, itself, (dii) Within […***…] after entering into a sublicense, Licensor must receive a copy LICENSEE will be jointly and severally liable for any damage arising out of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (acts or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee omissions of any of its LICENSEE’s sublicensees of the LICENSEE’s licensed rights hereunder and (iii) LICENSEE will remain obligated to perform LICENSEE’s own obligations under this Agreement. Licensee is and shall remain CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE COPY FILED HEREWITH OMITS THE INFORMATION SUBJECT TO THE CONFIDENTIALITY REQUEST. OMISSIONS ARE DESIGNATED AS […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission]. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
2.4.3 2.2.2 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive under the License will automatically terminate upon any termination of this Agreement in accordance with and subject the License.
2.2.3 No sublicensee of LICENSEE under the License will have the right to further sublicense its rights under any such sublicensing arrangement without the terms prior written consent of Section 6.6.2the Council, which consent will not be unreasonably withheld or delayed.
Appears in 2 contracts
Samples: License Agreement, License Agreement (TherapeuticsMD, Inc.)
Sublicensing. 2.4.1 Upon In accordance with all terms, and subject to all conditions, set forth in this Agreement, as of the effectiveness of each Grant Date and Distribution Date, Licensee shall have the right to grant to any Permitted Sublicensee a non-transferable sublicense (without the right to grant further sublicenses) under the rights and licenses granted pursuant to Section 2.1.4Licensee in this Article 2; provided, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided however, that in no event shall any such sublicense must comply with exceed the provisions scope of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense the rights and licenses granted to Licensee under in this Agreement is subject Article 2. The Parties acknowledge and agree that, as of immediately prior to the following conditions:
Distribution Date, all Subsidiaries of SpinCo (aother than Licensee) are using the XX Xxxxx or Approved GE Entity Names (as applicable) in the conduct of the SpinCo Business (excluding any Former SpinCo Business) and therefore shall be deemed “Permitted Sublicensees” hereunder; provided, however, that if Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with notifies Parent within thirty (30) days of the Sublicensee. Licensor must receive written notice as soon as practicable following execution Distribution Date of any Subsidiary that is not so using the XX Xxxxx or Approved GE Entity Names, as applicable, such sublicenses.
(b) In Subsidiary shall not be deemed a “Permitted Sublicensee” and shall not receive any sublicenses hereunder. Licensee shall cause each sublicense agreement, the Permitted Sublicensee must be required to fully comply with the all terms and conditions of set forth in this Agreement to the same extent as if such Permitted Sublicensee was directly bound thereby, and Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary shall be liable hereunder for all actions or omissions of such any Permitted Sublicensee, including any breach or other violation by any Permitted Sublicensee of any terms and conditions under such sublicense agreement; provided that nothing shall prevent set forth herein, as if performed (or failed to be performed) by Licensee from granting sublicenses of more limited scope than Licensee’s rightsitself. Notwithstanding the foregoing, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records event any Permitted Sublicensee ceases to be a Subsidiary of SpinCo, except as and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability provided in Section 10.1(c), such Person shall immediately cease to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, “Permitted Sublicensee” and Licensee will be deemed all sublicenses granted to be in breach of this Agreement as a result of such act or omissionit under the rights and licenses hereunder shall automatically terminate forthwith.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: Trademark License Agreement (GE HealthCare Technologies Inc.), Trademark License Agreement (GE Healthcare Holding LLC)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Except as set out in item 5 of the Details Schedule or under clause 3.3(b):
(i) the Licensee may only grant sublicenses […***…] only pursuant sublicences of the Licence to a written sublicense agreement with the Sublicensee. Licensed IPR where the proposed sublicensee is approved by the Licensor must receive written notice as soon as practicable following execution in writing; and
(ii) the Licensor will not unreasonably withhold approval, but may withhold approval (or revoke approval) on reasonable grounds, including based on the risk, financial status or reputation of any such sublicensesthe sublicensee.
(b) In each sublicense agreementExcept where sublicence rights are expressly limited in item 5 of the Details Schedule and subject to the further requirements under this clause 3.3, the Sublicensee must be Licensee may sublicence the Licensed IPR without further approval of the Licensor:
(i) as agreed in the Commercialisation Business Plan; or
(ii) to users of Products, but only to the extent required to comply with enable use of the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProduct.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor Licensee must receive a copy ensure that all sublicences of the sublicense written in the English language for Licensor’s records and to share Licensed IPR are consistent with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is Without limitation, unless otherwise approved by the Licensor in writing, the sublicence agreement must include provisions to the effect that:
(i) the sublicensee must observe terms similar to, consistent with and shall remain […***…] to Licensor for all of Licensee’s duties and obligations at least as onerous as those contained in this Agreement so far as they are capable of observance and performance by the sublicensee;
(ii) the sublicence will be personal to the sublicensee and will not be assignable, nor will the sublicensee have the right to sublicense;
(iii) the Licensee may terminate the sublicence without compensation or notice if the sublicensee does anything or omits to do anything which would, if done or omitted to be done by the Licensee, give the Licensor the right to terminate this Agreement;
(iv) such sublicence is capable of being terminated, or novated to the Licensor, at the Licensor's sole discretion at the same time as the termination of (or exercise by the Licensor of its rights under clause 15.5 in respect of) this Agreement or any licences granted under it; and
(v) the Licensor has audit rights in respect of the sublicensee equivalent to the Licensor’s rights to audit the Licensee under clause 6 of this Agreement.
(d) In addition to the Licensor's other obligations under this Agreement, the Licensee must notify the Licensor promptly of any sublicence entered into and provide the Licensor with a copy of the sublicence terms (excluding for this purpose financial payment terms and any act personal information). In respect of any sublicences to users of Products, the Licensee is only required to notify the Licensor of its intention to use a particular form of sublicence.
(e) The acts or omission omissions of an Affiliate or Sublicensee that would be a breach any sublicensee are considered for the purposes of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach the acts or omissions of this Agreement as a result of such act or omissionthe Licensee.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: Licence Agreement (Exclusive Commercialisation), Licence Agreement
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant Subject to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement and WXXX License Agreement, Century shall have the right to grant sublicenses under the same extent as Licensee has agreed license granted to it under Section 2.1 to Affiliates and must acknowledge Third Parties (each, a “Sublicensee”) through multiple tiers; provided that Licensor is an express third party beneficiary any such sublicense shall only be through one tier solely, if such sublicense includes a sublicense of Licensed Patent Rights under the WXXX License Agreement and the terms of such license require the consent of WXXX thereunder for Sublicensee to have further rights to sublicense; provided further that any sublicense shall be pursuant to a written agreement and each sublicense shall be subject to terms and conditions no less restrictive than those set forth in this Agreement. For the avoidance of doubt, each sublicense terminates automatically upon the termination of this Agreement.
(b) Century shall have the same responsibility for the activities of any Sublicensee as if the activities were directly those of Century. Century shall be responsible for each of its Sublicensees complying with all obligations of Century under this Agreement that are applicable to sublicenses and any breach by a Sublicensee under any such sublicense agreement; provided that nothing shall prevent Licensee be deemed to be a breach of Century under this Agreement. Century will provide CDI with the name, contact information and address of each Sublicensee, as well as information regarding the number of full-time employees of any such Sublicensee. Century will provide to CDI copies of each sublicense agreement and any amendments thereto within thirty (30) days of executing a sublicense. If such sublicense includes a sublicense of Licensed Patent Rights under the WXXX License Agreement and the terms thereof promptly and without condition from granting sublicenses such licensor its consent to such sublicense and shall provide Century with copies of more limited scope than Licensee’s rightsall communications with or from WXXX promptly after transmission or receipt, e.g. in a more limited territoryas applicable, field of use, or termrelated to such efforts to obtain consent.
(c) The official language If this Agreement is terminated for any reason other than by Century pursuant to Section 9.6, then, at the option of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written Sublicensee not in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information default of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s sublicense (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach provision of this Agreement if performed or omitted by Licenseeapplicable to such Sublicensee), and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third terminating Party shall survive termination of this Agreement in accordance use Commercially Best Efforts to execute a possible direct license arrangement with such Sublicensee under, and subject to the terms of Section 6.6.2and conditions of, this Agreement.
Appears in 2 contracts
Samples: License Agreement (Century Therapeutics, Inc.), License Agreement (Century Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee; ****. Licensor must receive written notice as soon as practicable following execution of any such sublicenses. Any further sublicenses granted by any Sublicensees (to the extent permitted hereunder) must comply with the provisions of this Section 2.4 (including Section 2.4.2) to the same extent as if Licensee granted such sublicense directly.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] * after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing LicensesREGENXBIO Licensors. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensorsthe REGENXBIO Licensors’) ability to ensure compliance with this Agreement; provided that, if any either of Licensor’s licensors require the REGENXBIO Licensors requires a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy. * * * * CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITHRESPECT TO THE OMITTED PORTIONS.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] * to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: License Agreement, License Agreement (AveXis, Inc.)
Sublicensing. 2.4.1 (a) LICENSEE shall have no right or power to grant sublicenses of the LICENSED CELL LINE, under section 21. (a), except LICENSEE shall have the right to sublicense third parties to make the LICENSED MONOCLONAL ANTIBODY on behalf of LICENSEE solely for the use of LICENSEE, its AFFILIATES and sublicensees subject to FHCRC’s prior written consent, which consent shall not be unreasonably withheld. If FHCRC does not respond in thirty (30) days to written request for consent from LICENSEE, such non-response shall constitute consent by FHCRC hereunder. In addition to any other requirements imposed under this Agreement, a sublicense of the LICENSED CELL LINE shall require that the LICENSED CELL LINE be maintained in and not transferred from the United States and will prohibit the sublicensee from sublicensing or otherwise transferring the LICENSED CELL LINE to any other person or entity. Upon the effectiveness prior written approval of each Grant Date FHCRC, which shall not be unreasonably withheld, LICENSEE may sublicense on third party to make the LICENSED MONOCLONAL ANTIBODY in Europe on behalf of LICENSEE solely for the use of LICENSEE, its AFFILIATES and the rights granted pursuant sublicensees upon terms and conditions agreeable to Section 2.1.4, Licensee’s rights to FHCRC. A determination by FHCRC that a sublicense will affect adversely its rights in the LICENSED CELL LINE or the LICENSED MONOCLONAL ANTIBODY or its ability to enforce those rights shall be limited deemed a reasonable basis to the specific Licensed Indication covered by such license. The license granted pursuant withhold consent to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions for purposes of this Section 2.4 (including Section 2.4.22.2(a).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreementLICENSEE may grant and authorize sublicenses to permit third parties to perform LICENSED SERVICES and to make, have made, use and sell LICENSED PRODUCTS (but not the Sublicensee must be required to comply with LICENSED CELL LINE) within the terms and conditions scope of the License described in Section 2.1(b) of this Agreement with FHCRC’s prior written consent, which consent will not be unreasonably withheld. If FHCRC does not respond in thirty (30) days to written request for consent from LICENSEE, such non-response shall constitute consent by FHCRC hereunder. All sublicenses granted by LICENSEE under this Section 2.2 (b) shall include a requirement that the sublicensesee use reasonable efforts to introduce the LICENSED PRODUCTS into the commercial market as soon as reasonably possible, consistent with sound and reasonable business practices and judgment, and thereafter endeavor to keep LICENSED PRODUCTS reasonably available to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termpublic.
(c) The official language In addition to any other requirements of this Agreement, any sublicense agreement under this Section 2.2 shall bind the sublicensee to meet all LICENSEE’s obligations to FHCRC under this Agreement. Royalties charged for sublicenses by LICENSEE shall be commercially reasonable. LICENSEE shall promptly provide FHCRC with a copy of any sublicense agreement shall be Englishsubject to the confidentiality provisions of Article 10 of this Agreement.
(d) Within […***…] after entering into a sublicenseNotwithstanding 2.2 (a)-(c), Licensor must receive a copy LICENSEE may transfer the LICENSED MONOCLONAL ANTIBODY to third parties, and if required by such third party, sublicense the LICENSED MONOCLONAL ANTIBODY for the purpose of testing, analysis, development or manufacturing of LICENSED PRODUCTS or LICENSED SERVICES to be sold or offered for sale by LICENSEE or authorized sublicensees; provided that the sublicense written third party to whom the transfer is made has agreed (1) in writing to use the English language LICENSED MONOCLONAL ANTIBODY solely for Licensor’s records that limited purpose and has agreed (2) not to share with Licensor’s licensors under make, use or sell or offer for sale or otherwise distribute or exploit the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (LICENSED MONOCLONAL ANTIBODY or any LICENSED PRODUCT or LICENSED SERVICE and (3) to be bound by the Confidentiality provisions in Article 10 of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: Non Exclusive License Agreement (Xcyte Therapies Inc), Non Exclusive License Agreement (Xcyte Therapies Inc)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. 2.5.1 The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 2.5 (including Section 2.4.22.5.2).
2.4.2 2.5.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: License Agreement (Dimension Therapeutics, Inc.), License Agreement (Dimension Therapeutics, Inc.)
Sublicensing. 2.4.1 4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4written approval, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing which shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language include prior review of any sublicense agreement by the IC and which shall not be English.
(d) Within unreasonably withheld, the Licensee may enter into sublicensing agreements under the Licensed Patent Rights. With respect to any proposed sublicense agreement, if the IC does not provide the Licensee with written rejection thereof or request for a reasonable extension of review time within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in is provided to the English language for Licensor’s records IC and to share with Licensor’s licensors under the Existing Licensese-mail address indicated on the Signature Page of this Agreement, approval of such sublicense agreement shall be deemed to have been given and the Licensee shall have the right to enter into such sublicense agreement.
4.2 The Licensee agrees that any sublicenses granted by it shall provide that the obligations to the IC of Paragraphs 5.1-5.4, 8.1, 10.1, 10.2, 12.5, and 13.8-13.10 of this Agreement shall be binding upon the sublicensee as if it were a party to this Agreement. The copy Licensee further agrees to attach copies of these Paragraphs to all sublicense agreements.
4.3 Any sublicenses granted by the sublicense may be redacted to exclude confidential information of Licensee shall provide for the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy termination of the sublicense, Licensee shall provide such completeor the conversion to a license directly between the sublicensees and the IC, unredacted copyat the option of the sublicensee, upon termination of this Agreement under Article 13. This conversion is subject to the IC approval and contingent upon acceptance by the sublicensee of the remaining provisions of this Agreement.
(e) Licensee’s execution 4.4 The Licensee agrees to forward to the IC a complete copy of a each fully executed sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain postmarked within […***…] of the execution of the agreement. To the extent permitted by law, the IC agrees to Licensor for all maintain each sublicense agreement in confidence. NIH Patent License Agreement—Exclusive Model 10-2015 Page 7 of Licensee’s duties and obligations contained in this Agreement and for any act or omission 30 [Final] [Kyverna Therapeutics] [4 May 2021]
4.5 The Licensee may enter into sublicensing agreements under Licensed Patent Rights with Affiliates of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Paragraphs 4.1 and 4.4 of the Agreement and Paragraph V in Appendix C of the Agreement shall not apply to such Affiliate sublicense; provided that Licensee will be deemed to be shall notify IC in breach writing of this Agreement as a result the Affiliate that sublicenses any Licensed Patent Rights within […***…] of such act or omissioneffectiveness of each sublicense.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: Patent License Agreement (Kyverna Therapeutics, Inc.), Patent License Agreement (Kyverna Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] * but only pursuant to a written sublicense agreement with the Sublicensee. Licensor must ****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] * after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licensesdirect and indirect licensors. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its direct or indirect licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s direct or indirect licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] * to Licensor for all of Licensee’s duties and obligations contained in ‘this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: License Agreement (REGENXBIO Inc.), License Agreement (REGENXBIO Inc.)
Sublicensing. 2.4.1 Upon (a) [***] Licensee shall have the effectiveness of each Grant Date and right to grant sublicenses to Commercialize the Product in the Field in the Territory, through multiple tiers, under the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under Section 4.1, to its Affiliates and to one or more Third Parties. Licensee shall have the right to grant sublicenses to its rights to Develop and Manufacture the Compound and Product (i) to its Affiliates, with the right to sublicense in accordance with this Agreement is subject Section 4.3(a), (ii) to any Third Party to whom Licensee, in accordance with the previous sentence, has granted a sublicense to Commercialize the Product in the Field in the Territory, and (iii) to one or more vendors, contract research organizations and the like to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant extent necessary or useful to a written sublicense agreement Develop and/or Commercialize the Product in accordance with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicensesLicensee’s express rights under this Agreement.
(b) In each Takeda shall have the right to grant one or more licenses or sublicenses, as the case may be, under the rights granted to Takeda under Section 4.2, (i) to its Affiliates, with the right to sublicense agreementin accordance with this Section 4.3(b), (ii) to any Third Party to whom Takeda or its Affiliates has granted a sublicense to Commercialize the Sublicensee Compound and/or Product outside of the Territory, and (iii) to one or more vendors, contract research organizations and the like, to the extent necessary or useful to Develop and/or Commercialize the Product in accordance with Takeda’s express rights under this Agreement.
(c) Each sublicense shall refer to and be subordinate to this Agreement and, except to the extent the Parties otherwise agree in writing, any such sublicense must be required to comply consistent in all material respects with the terms and conditions of this Agreement. Each Party shall remain responsible for the performance of this Agreement to and the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary performance of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be Englishits sublicensees hereunder.
(d) Within […***…] after entering Upon an early termination of Licensee’s license rights under this Agreement (i) pursuant to Section 13.2 or (ii) pursuant to Section 13.5, Takeda shall offer any Third Party sublicensee under a Commercial sublicense granted by Licensee or its Affiliates pursuant to Section 4.3(a) that was in effect on the effective date of termination of Licensee’s license rights under this Agreement the right to enter into a license agreement directly with Takeda on substantially the same terms and conditions under which such rights and licenses were granted to such sublicensee, provided that (A) such sublicensee is not then in breach of its sublicense, Licensor must receive a copy (B) such sublicensee agrees to comply with all the terms of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted this Agreement to the extent applicable to the rights sublicensed to it by Licensee or its Affiliate, and (C) such agreement does not impose any obligations upon Takeda that it impairs Licensor’s (or any exceed the obligations of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations Takeda under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.]
Appears in 2 contracts
Samples: License Agreement (Phathom Pharmaceuticals, Inc.), License Agreement (Phathom Pharmaceuticals, Inc.)
Sublicensing. 2.4.1 Upon (a) Vaxcyte shall have the effectiveness of each Grant Date and the rights granted pursuant right to Section 2.1.4, Licenseeextend Vaxcyte’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 obligations hereunder (including Section 2.4.2).
2.4.2 The the right to sublicense granted the Manufacturing Rights through multiple tiers) to Licensee under this Agreement its Affiliates (for clarity, including both current and future Affiliates, but only for so long as the applicable entity is subject to the following conditions:
(a) Licensee may grant sublicenses an Affiliate of Vaxcyte); provided, that […***…] only pursuant to a written sublicense ]. In the event that any Affiliate of Vaxcyte enters into an agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution an Approved CMO or Approved Contractor that includes a sublicense of any of the Manufacturing Rights, then such sublicensesagreement shall provide that, if such Affiliate ceases to be an Affiliate of Vaxcyte prior to such agreement being assigned or transferred to Vaxcyte or another Affiliate of Vaxcyte, such agreement will immediately terminate or be automatically assigned or transferred by such Affiliate to Vaxcyte (or another Affiliate of Vaxcyte), at Vaxcyte’s discretion.
(b) In each Vaxcyte, and Vaxcyte’s Affiliates to which Vaxcyte granted a sublicense agreementunder Section 2.3(a), may sublicense the Sublicensee must be required Manufacturing Rights through a single tier to comply with Approved CMOs and Approved Contractors for the terms and conditions benefit of this Agreement to Vaxcyte (but not, for clarity, for the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary independent commercial use of such terms and conditions under such Approved CMOs or Approved Contractors). Each sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, granted to an Approved CMO or term.
(cApproved Contractor pursuant to this Section 2.3(b) The official language of any sublicense agreement shall be English.
(d) Within granted pursuant to a written agreement between the Approved CMO or Approved Contractor and Vaxcyte that […***…]. With respect to any Approved CMO, and any Approved Contractor that will have access to, or use, Sutro Core Know-How:
(i) Vaxcyte shall provide to Sutro Vaxcyte’s proposed agreement with such Approved CMO or Approved Contractor at least [***] after entering into a sublicenseprior to Vaxcyte executing such agreement, Licensor must receive a copy and Vaxcyte shall [***];
(ii) In the event any Approved CMO or Approved Contractor breaches such agreement with Vaxcyte with respect to provisions of such agreement relating to safeguarding the Sutro Know-How and Sutro Core Know-How, then upon Sutro’s reasonable request, Vaxcyte will use Commercially Reasonable Efforts to enforce such agreement (and to otherwise fully cooperate with Sutro in enforcing Sutro’s rights in Sutro Know-How and Sutro Core Know-How) against such Approved CMO or Approved Contractor in respect of such breach, [***]. Any amounts recovered by Sutro or Vaxcyte in enforcing any such claim shall be paid as follows: [***]; and
(iii) Vaxcyte shall include all reasonably necessary and appropriate protections for Sutro’s applicable intellectual property rights (including provisions to effect Sutro’s ownership of the sublicense written New IP) in any such agreement with an Approved CMO or Approved Contractor for manufacturing Extract, and such Approved CMO or Approved Contractor shall not be permitted thereunder to use any intellectual property or Discloser’s Information of Sutro, except in connection with the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy exercise of the sublicense Manufacturing Rights on behalf of Vaxcyte (or as otherwise may be redacted authorized by Sutro in writing). Vaxcyte shall provide to exclude confidential information Sutro copies of the applicable Sublicenseecontractual provisions in such agreement related to protection of Sutro’s intellectual property with such Approved CMO or Approved Contractor, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission].
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 2 contracts
Samples: Manufacturing Rights Agreement (Sutro Biopharma, Inc.), Manufacturing Rights Agreement (Vaxcyte, Inc.)
Sublicensing. 2.4.1 4.1 Upon the effectiveness written approval, which shall include prior review of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language copy of any sublicense agreement by the NIH and which shall not be English.
(d) Within unreasonably withheld, the Licensee may enter into sublicensing agreements under the Licensed Patent Rights. With respect to any proposed sublicense agreement, if the NIH does not provide the Licensee with written rejection thereof within […***…] after entering into a sublicense, Licensor must receive the date the NIH receives a copy thereof from the Licensee, the NIH shall be deemed to have given its approval of such sublicense agreement and the Licensee shall have the right to enter into such sublicense written in agreement. A-294-2011 NIH Patent License Agreement - Exclusive
4.2 The Licensee agrees that any sublicenses granted by it shall provide that the English language for Licensor’s records obligations to the NIH of Paragraphs 5.1-5.4, 8.1, 10.1, 10.2, 12.5, and 13.8-13.10 of this Agreement shall be binding upon the sublicensee as if it were a party to share with Licensor’s licensors under the Existing Licensesthis Agreement. The copy Licensee further agrees to attach copies of these Paragraphs to all sublicense agreements.
4.3 Any sublicenses granted by the sublicense may be redacted to exclude confidential information of Licensee shall provide for the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy termination of the sublicense, Licensee shall provide such completeor the conversion to a license directly between the sublicensees and the NIH, unredacted copyat the option of the sublicensee, upon termination of this Agreement under Article 13. This conversion is subject to NIH approval and contingent upon acceptance by the sublicensee of the remaining provisions of this Agreement.
(e) Licensee’s execution 4.4 The Licensee agrees to forward to the NIH a copy of a each fully executed sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain postmarked within […***…] of the execution of the agreement. To the extent permitted by law, the NIH agrees to Licensor for all of maintain each sublicense agreement in confidence.
4.5 The Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed right to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee grant sublicenses hereunder to a Third Party shall survive termination of this Agreement in accordance with and is further subject to the terms limitation that there shall not exist, at any time in any country, (i) more than […***…] sublicense then in effect for the Licensed Fields of Section 6.6.2.Use (a) and/or (c) in Appendix B; and/or (ii) more than […***…] sublicense then in effect for the Licensed Fields of Use (b) and/or (d) in Appendix B.
Appears in 2 contracts
Samples: Patent License Agreement (Kite Pharma, Inc.), Patent License Agreement (Kite Pharma, Inc.)
Sublicensing. 2.4.1 4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4written approval, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing which shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language include prior review of any sublicense agreement by the IC and which shall not be English.
(d) Within unreasonably withheld, the Licensee may enter into sublicensing agreements under the Licensed Patent Rights. With respect to any proposed sublicense agreement, if the IC does not provide the Licensee with written rejection thereof or request for a reasonable extension of review time within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in is provided to the English language for Licensor’s records IC and to share with Licensor’s licensors under the Existing Licensese-mail address indicated on the Signature Page of this Agreement, approval of such sublicense agreement shall be deemed to have been given and the Licensee shall have the right to enter into such sublicense agreement.
4.2 The Licensee agrees that any sublicenses granted by it shall provide that the obligations to the IC of Paragraphs 5.1-5.4, 8.1, 10.1, 10.2, 12.5, and 13.8-13.10 of this Agreement shall be binding upon the sublicensee as if it were a party to this Agreement. The copy Licensee further agrees to attach copies of these Paragraphs to all sublicense agreements.
4.3 Any sublicenses granted by the sublicense may be redacted to exclude confidential information of Licensee shall provide for the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy termination of the sublicense, Licensee shall provide such completeor the conversion to a license directly between the sublicensees and the IC, unredacted copyat the option of the sublicensee, upon termination of this Agreement under Article 13. This conversion is subject to the IC approval and contingent upon acceptance by the sublicensee of the remaining provisions of this Agreement.
(e) Licensee’s execution 4.4 The Licensee agrees to forward to the IC a complete copy of a each fully executed sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain postmarked within […***…] of the execution of the agreement. To the extent permitted by law, the IC agrees to Licensor for all maintain each sublicense agreement in confidence.
4.5 The Licensee may enter into sublicensing agreements under Licensed Patent Rights with Affiliates of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Paragraphs 4.1 and 4.4 of the Agreement and Paragraph V in Appendix C of the Agreement shall not apply to such Affiliate sublicense; provided that Licensee will be deemed to be shall notify IC in breach writing of this Agreement as a result the Affiliate that sublicenses any Licensed Patent Rights within […***…] of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination effectiveness of this Agreement in accordance with and subject to the terms each sublicense. NIH Patent License Agreement—Exclusive Model 10-2015 Page 6 of Section 6.6.2.29 [Final] [Kyverna Therapeutics] [12 May 2021]
Appears in 2 contracts
Samples: Patent License Agreement (Kyverna Therapeutics, Inc.), Patent License Agreement (Kyverna Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.. *** Confidential Treatment Requested ***
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Option and License Agreement
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and 2.2.1 Anebulo shall be entitled to sublicense (including through multiple tiers) the rights granted to it under Clause 2.1 above to any person with similar or greater financial resources and expertise as Anebulo, provided such person is not developing or commercialising any product (whether a pipeline asset or a marketed product) which (i) contains a CB1 antagonist or (ii) is for the same indication covered or proposed to be covered by a Phase II Clinical Trial, a Pivotal Clinical Trial, an application for a Marketing Authorisation or a granted Marketing Authorisation for the Licensed Product. If Anebulo or a Sublicensee wishes to grant a sub-license to any person that does not meet the above criteria then it shall not do so without Vernalis’ prior written consent (such consent not to be unreasonably withheld or delayed). Any person to which Anebulo grants a sublicence and to which any further tiers of sublicence are granted, each pursuant to Section 2.1.4this Clause 2.2.1, Licensee’s rights to sublicense will shall be limited to a “Sublicensee”. In the specific Licensed Indication covered by such license. The license granted event that Anebulo grants one or more sublicences pursuant to Section 2.1.4 (if Clause 2.2.1, Anebulo shall remain responsible for all of its obligations under this Agreement and when effective) is sublicensable by Licensee shall cause each Sublicensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions applicable terms and conditions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right Agreement. If the acts or omissions of any Sublicensee cause Anebulo to sublicense granted to Licensee under be in breach of this Agreement is subject to the following conditions:
Agreement, Anebulo shall be responsible for such breach regardless of any remedy which either (a) Licensee Vernalis may grant sublicenses […***…] only pursuant have against the Sublicensee or (b) Anebulo may have against the Sublicensee for breach of the sublicense; provided, however, that if default by a Sublicensee of its material obligations gives rise to Vernalis’ right of termination under this Agreement, Vernalis shall not be entitled to terminate this Agreement if, within sixty (60) days after receipt of written notice thereof from Vernalis (or thirty (30) days in the case of breach of a written payment obligation), Anebulo has either (i) caused such Sublicensee to take actions to cure such default, or (ii) terminated its sublicense agreement with the Sublicenseesuch Sublicensee and taken actions to cure such default. Licensor must receive written notice as soon as practicable following execution of any Any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must permitted sublicences shall be required consistent with and expressly made subject to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing Agreement. Anebulo shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive provide a copy of the sublicense written in the English language for Licensor’s records and any sublicence agreement executed by Anebulo or any Sublicensee to share with Licensor’s licensors under the Existing Licenses. The Vernalis within ten (10) Business Days of its execution, (which copy of the sublicense may be redacted to exclude confidential delete information not relevant to determining whether such sublicense is consistent with the provisions of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy).
(e) Licensee’s execution 2.2.2 In the event of a termination of this Agreement with respect to any Vernalis Licensed Compound or Licensed Product, any sublicence granted by Anebulo pursuant to Clause 2.2.1 shall automatically terminate. In event of such termination, any Sublicensee that Anebulo notifies to Vernalis in writing is in good standing under its sublicense agreement with Company will not relieve Licensee of any of its obligations under this Agreement. Licensee is have the right to request a new direct license with Vernalis on substantially the same terms and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained conditions as those in this Agreement and for Vernalis agrees to consider such request and negotiate any act license in good faith, provided that Vernalis shall have no obligation to grant any such license or omission of an Affiliate assume or Sublicensee that would be a breach of agree to any additional obligations beyond those set forth in this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionAgreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon Subject to the effectiveness terms and conditions of each Grant Date this Agreement and the In-License Agreements, Teijin shall have the right to sublicense the rights granted to it under Section 2.1 to:
2.2.1 Any of its Affiliates without Versartis’ consent; provided that (i) Teijin provides Versartis with prior notice of the name of the Affiliate and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by sublicensed; (ii) such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required Affiliate agrees in writing to comply with the terms and conditions of this Agreement that are applicable to such Affiliate’s activities under such sublicense; and (iii) Teijin remains fully liable for the performance of such Affiliate in accordance with this Agreement. Any sublicense granted by Teijin to one of its Affiliates shall terminate if such entity is no longer an Affiliate of Teijin and Versartis’ approval is not obtained for the continuation of such sublicense [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. in accordance with subsection 2.2.2 below. Versartis hereby consents to the same extent as Licensee has agreed grant by Teijin of a sublicense of all the rights granted hereunder to Teijin Pharma Limited (“TPL”), a wholly owned subsidiary of Teijin and must acknowledge organized and existing under the laws of Japan, having its registered office at 2-1, Xxxxxxxxxxxx 0-xxxxx, Xxxxxxx-xx, Xxxxx 000-0000, Xxxxx and Teijin hereby guarantees that Licensor is an express third party beneficiary of such TPL will comply with the terms and conditions of this Agreement that are applicable to TPL’s activities under such sublicense. Versartis agrees that the foregoing clauses (i) and (ii) shall not apply to such grant of sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsto TPL.
2.2.2 Third Parties with Versartis’ prior written consent, e.g. in a more limited territorysuch consent not to be unreasonably withheld, field of useconditioned, or term.
delayed; provided, that (ci) The official language such sublicensee agrees in writing to comply with the term and conditions of any sublicense agreement shall be English.
this Agreement that are applicable to such sublicensee’s activities under such sublicense; and (dii) Within […***…] after entering into a sublicense, Licensor must receive a copy Teijin remains fully liable for the performance of the sublicense written such sublicensee in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance accordance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Exclusive License and Supply Agreement (Versartis, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Except as set out in item 5 of the Details Schedule or under clause 3.3(b):
(i) the Licensee may only grant sublicenses […***…] only pursuant sublicences of the Licence to a written sublicense agreement with the Sublicensee. Licensed IPR where the proposed sublicensee is approved by the Licensor must receive written notice as soon as practicable following execution in writing; and
(ii) the Licensor will not unreasonably withhold approval, but may withhold approval (or revoke approval) on reasonable grounds, including based on the risk, financial status or reputation of any such sublicensesthe sublicensee.
(b) In each sublicense agreementExcept where sublicence rights are expressly limited in item 5 of the Details Schedule and subject to the further requirements under this clause 3.3, the Sublicensee must be Licensee may sublicence the Licensed IPR without further approval of the Licensor:
(i) as agreed in the Commercialisation Business Plan; or
(ii) to users of Products, but only to the extent required to comply with enable use of the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProduct.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor Licensee must receive a copy ensure that all sublicences of the sublicense written in the English language for Licensor’s records and to share Licensed IPR are consistent with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is Without limitation, unless otherwise approved by the Licensor in writing, the sublicence agreement must include provisions to the effect that:
(i) the sublicensee must observe terms similar to, consistent with and shall remain […***…] to Licensor for all of Licensee’s duties and obligations at least as onerous as those contained in this Agreement so far as they are capable of observance and performance by the sublicensee;
(ii) the sublicence will be personal to the sublicensee and will not be assignable, nor will the sublicensee have the right to sublicense;
(iii) the Licensee may terminate the sublicence without compensation or notice if the sublicensee does anything or omits to do anything which would, if done or omitted to be done by the Licensee, give the Licensor the right to terminate this Agreement;
(iv) such sublicence is capable of being terminated, or novated to the Licensor, at the Licensor's sole discretion at the same time as the termination of (or exercise by the Licensor of its rights under clause 15.5 in respect of) this Agreement or any licences granted under it; and
(v) the Licensor has audit rights in respect of the sublicensee equivalent to the Licensor’s rights to audit the Licensee under clause 6 of this Agreement.
(d) In addition to the Licensor's other obligations under this Agreement, the Licensee must notify the Licensor promptly of any sublicence entered into and provide the Licensor with a copy of the sublicence terms (excluding for this purpose financial payment terms and any act personal information). In respect of any sublicences to users of Products, the Licensee is only required to notify the Licensor of its intention to use a particular form of sublicence.
(e) The acts or omission omissions of an Affiliate or Sublicensee that would be a breach any sublicensee are considered for the purposes of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach the acts or omissions of this Agreement as a result of such act the Licensee. Guidance Note for clause 3.4: This template does not provide for technology transfer services (eg instruction and training, maintenance services, show- how, help desk or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder personnel support etc). This clause does allow for the parties to a Third Party shall survive termination of this Agreement in accordance with agree to 'Materials' and subject support that the Licensor will provide to the terms of Section 6.6.2Licensee to assist with exercising the Licensee's rights. For example, this may include prototypes, samples or documentation. If the Licensee requires substantial additional services, the simplest approach is to use a separate agreement.
Appears in 1 contract
Samples: Licensing Agreement
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may The licenses granted to Tekmira in Section 2.1 include the right for Tekmira to grant sublicenses […***…] sublicenses, but only pursuant on a Tekmira Sublicensable Product-by-Tekmira Sublicensable Product basis, to a written sublicense agreement with Third Parties to Research, Develop and/or Commercialize Tekmira Products that are Tekmira Sublicensable Products. Tekmira shall require that the Sublicensee. Licensor must receive written notice as soon as practicable following execution terms of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply under its rights in this Agreement are fully in compliance with the terms and conditions of this Agreement and of the Alnylam Existing In-Licenses governing Alnylam’s rights under the Alnylam Licensed Technology.
(b) The licenses granted to Alnylam in Section 2.2(a), Section 2.2(b) and Section 2.2(c) include the same extent as Licensee has agreed and must acknowledge right for Alnylam to grant sublicenses in the Alnylam Field, but only on a Alnylam Sublicensable Product-by-Alnylam Sublicensable Product basis, to Third Parties to Research, Develop and/or Commercialize Alnylam Products that Licensor is an express third party beneficiary are Alnylam Sublicensable Products. Alnylam shall require that the terms of such any sublicense under its rights in this Agreement are fully in compliance with the terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termthis Agreement.
(c) Any sublicense granted by a Party hereunder shall be subject and subordinate to the terms and conditions of this Agreement and shall contain terms and conditions consistent with those in this Agreement. The official language sublicensing Party shall assume full responsibility for the performance of all obligations and observance of all terms herein under the licenses granted to it and will itself pay and account to the other Party for all payments due under such licenses by reason of any such sublicense. If a sublicensing Party becomes aware of a material breach of any sublicense agreement by a Sublicensee, the sublicensing Party shall be Englishpromptly notify the other Party of the particulars of same and take all reasonable efforts to enforce the terms of such sublicense.
(d) Within Unless otherwise provided in this Agreement, the sublicensing Party will notify the other Party within […***…] days after entering execution of a sublicense entered into a sublicense, Licensor must receive hereunder and provide a copy of the fully executed sublicense written in agreement to the English language for Licensor’s records other Party within the same time frame (with such reasonable redactions as the sublicensing Party may make, provided that [**] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to share the omitted portions. such redactions do not include provisions necessary to demonstrate compliance with Licensor’s licensors under the Existing Licenses. The copy requirements of this Agreement), which shall be treated as Confidential Information of the sublicense sublicensing Party under Article VI; and provided further that the other Party may be redacted disclose such agreement(s) to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted Third Parties under confidence if and to the extent that it impairs Licensorrequired in order to comply with such other Party’s (or any of its licensors’) ability to ensure compliance with contractual obligations under both this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyAgreement and Third Party agreements.
(e) Licensee’s execution Tekmira hereby waives the foregoing sublicensing restrictions and requirements of Section 2.2(c), Section 2.2(d) and this Section 2.3 with respect to the Alnylam Existing Sublicenses. In addition, to the extent that Alnylam as of the Effective Date has licensed or sublicensed any Patent or Know-How Controlled by Tekmira as of the Effective Date to any Third Party pursuant to any Alnylam Existing Sublicense, or granted any Third Party pursuant to any Alnylam Existing Sublicense any option to obtain a license or sublicense agreement under any Patent or Know-How Controlled by Tekmira, the rights of the applicable Third Party shall not be affected by this Agreement, and if such Third Party Develops or Commercializes Alnylam Products, then Tekmira will not relieve Licensee of any of its obligations under be entitled to milestone payments and royalties with respect thereto as set forth in this Agreement. Licensee is and shall remain […***…] Alnylam agrees that it will not grant any additional options, licenses or sublicenses under Alnylam Patents, Tekmira Combined Licensed Technology, UBC Patents or Category 1 Patents to Licensor for all AlCana to Research, Develop or Commercialize siRNA Products without the prior written consent of LicenseeTekmira or enter into any additional contractual obligations to indemnify AlCana as to AlCana’s duties and obligations contained in this Agreement and for any act practice of the Alnylam Patents, Tekmira Combined Licensed Technology, UBC Patents or omission of an Affiliate Category 1 Patents to Research, Develop or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionCommercialize siRNA Products.
2.4.3 Any sublicense agreement granted by Licensee hereunder (f) Notwithstanding Sections 2.3(a) and 2.3(b), either Party may utilize Permitted Contractors and Institutional Collaborators to a Research and/or Develop their respective Products, whether or not such Products have become Sublicensable Products; provided that (i) such Party does not grant any such Permitted Contractor or Institutional Collaborator any license to Commercialize Products that are not Sublicensable Products and (ii) no Party shall share any of the other Party’s Confidential Information with such Permitted Contractor or Institutional Collaborator unless such Third Party shall survive termination of this Agreement in accordance with have executed a binding confidentiality agreement containing reasonably customary terms and subject to the terms of Section 6.6.2conditions.
Appears in 1 contract
Samples: Cross License Agreement (TEKMIRA PHARMACEUTICALS Corp)
Sublicensing. 2.4.1 Upon (a) In the effectiveness of each Grant Date and event that ARROWHEAD sublicenses the rights granted pursuant under Section 4.1, ARROWHEAD will notify ALNYLAM within thirty (30) days after such sublicense becomes effective and provide a copy of the fully executed sublicense agreement to Section 2.1.4ALNYLAM within the same time frame (which copy may be redacted, Licenseeprovided that information relevant to ARROWHEAD’s rights obligations to ALNYLAM hereunder shall not be redacted), which shall be treated as Confidential Information of ARROWHEAD, provided that ALNYLAM may disclose such sublicense will be limited agreement(s) to Third Parties under confidence if and to the specific Licensed Indication covered by such license. The license granted pursuant extent required in order to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with ALNYLAM’s contractual obligations related to ALNYLAM Patent Rights; and provided, further, that such Third Parties are bound in writing by confidentiality obligations consistent with those set forth herein. Should this Agreement or the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense rights granted to Licensee ARROWHEAD hereunder terminate for any reason, any sublicense(s) granted by ARROWHEAD to an ARROWHEAD Sublicensee shall survive such termination, provided that, as to each such ARROWHEAD Sublicensee, the ARROWHEAD Sublicensee is not then in material breach of the sublicense, all financial obligations to ALNYLAM under this Agreement is through the date of termination with respect to the, sublicensed rights have been satisfied, all obligations (including without limitation all financial obligations) to ALNYLAM under this Agreement with respect to the sublicensed rights continue to be satisfied by or on behalf of the ARROWHEAD Sublicensee and ALNYLAM shall have no responsibility for ARROWHEAD’ s obligations to the ARROWHEAD Sublicensee under the sublicense.
(b) Without limiting the foregoing, all sublicenses granted shall be subject to the following conditions:
(ai) Licensee may grant sublicenses […***…] only pursuant to a written Such sublicense agreement shall be consistent with the Sublicensee. Licensor must receive written notice as soon as practicable following execution requirements of any such sublicenses.this Agreement;
(bii) In each sublicense agreement, the Sublicensee must ARROWHEAD shall be required primarily liable for any failure by its sublicensees to comply with the terms all relevant restrictions, limitations and conditions of obligations in this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under Agreement;
(iii) Any such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination be in writing; and
(iv) In the event that the Sublicensee initiates any legal action seeking a determination that any of this Agreement the ALNYLAM Patent Rights in accordance with and subject to any country are invalid, unenforceable, and/or not infringed (including a request for reexamination or opposition of any such ALNYLAM Patent Rights), ARROWHEAD shall terminate the terms sublicense at the request of Section 6.6.2ALNYLAM.
Appears in 1 contract
Sublicensing. 2.4.1 Upon Curis shall have the effectiveness right to grant Sublicenses under the Curis Commercial License, and ImmuNext shall have the right to grant sublicenses under the ImmuNext License, in each case, through multiple tiers of sublicense solely in accordance with this Section 8.2, as follows:
8.2.1 each Grant Date Sublicense or ImmuNext sublicense (as applicable) shall refer to this Agreement and the rights granted pursuant shall be subordinate to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply consistent with the provisions terms and conditions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right Agreement, and shall not limit the ability of the granting Party to sublicense granted to Licensee fully perform its obligations under this Agreement is subject to or the following conditions:other Party’s rights under this Agreement;
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In 8.2.2 in each sublicense agreementSublicense, the Sublicensee must shall agree to be subject to, and bound by, the terms and conditions of the applicable Upstream Agreements to the extent required under the terms of such Upstream Agreements;
8.2.3 Curis shall remain responsible for the performance of its obligations under this Agreement and the conduct of its Affiliates and Sublicensees hereunder, including the payment of all payments due, and making reports and keeping books and records, and shall cause each Affiliate and Sublicensee to enable Curis to comply with the terms and conditions of this Agreement to Agreement;
8.2.4 ImmuNext shall remain responsible for the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any performance of its obligations under this Agreement. Licensee is Agreement and the conduct of its Affiliates and sublicensees hereunder, including making reports and keeping books and records, and shall remain […***…] cause each Affiliate and ImmuNext sublicensee to Licensor for all of Licensee’s duties enable ImmuNext to comply with the terms and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach conditions of this Agreement if performed Agreement; and
8.2.5 Sublicensees or omitted by LicenseeImmuNext sublicensees (as applicable) shall have the right to grant further Sublicenses or ImmuNext sublicenses (as applicable) of the same or lesser scope as its Sublicense or ImmuNext sublicense (as applicable) from the granting Party under the Curis Commercial License or the ImmuNext License, and Licensee will as applicable (the counterparty to such further Sublicense/sublicensee also being a “Sublicensee” or “ImmuNext sublicensee”, as applicable); provided, however, that such further Sublicenses or ImmuNext sublicenses (as applicable) shall be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to all of the terms and conditions of this Section 6.6.28.2 and Section 8.3 (i.e., such initial Sublicensee or ImmuNext sublicensee shall be subject to this Section 8.2.5 in the same manner and to the same extent as the granting Party).
Appears in 1 contract
Sublicensing. 2.4.1 Upon ECR shall have the effectiveness of each Grant Date and right to grant sublicenses under the rights granted grant in Section 2.1 to Affiliates and/or Third Parties pursuant to Section 2.1.4a separate written agreement, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following requirements and conditions:
2.2.1 ECR must obtain NovaDel’s prior written consent in respect of each such sublicense to an Affiliate or Third Party, which consent shall not be unreasonably withheld, delayed or conditioned. If NovaDel does not respond to ECR’s request to consent to a sublicense within ten (a10) Licensee may grant sublicenses […***…] only Business Days after receiving a written request, consent to such request shall be deemed to have been given.
2.2.2 Except to the extent the Parties otherwise agree pursuant to the terms of a written particular sublicense granted under this Section 2.2, except for financial terms, any sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply fully consistent with the terms and conditions of this Agreement Agreement, and provide that the sublicensee will indemnify NovaDel and its Affiliates to the same extent provided in Section 8.1.1.
2.2.3 Within five (5) Business Days after execution or receipt thereof, as Licensee has agreed applicable, ECR shall provide NovaDel with a full and must acknowledge complete copy of each sublicense agreement granted hereunder and shall deliver copies of all reports relating to the Product (including relating to royalties and other payments) received by ECR from such sublicensees.
2.2.4 Termination of this Agreement by NovaDel with respect to ECR shall not terminate any sublicense granted by ECR pursuant to this Section 2.2 with respect to a sublicensee, provided that Licensor (i) such sublicensee is an express third party beneficiary not in breach of any material provision of this Agreement or the applicable sublicense agreement, (ii) such sublicensee shall perform all obligations of ECR under this Agreement, (iii) NovaDel shall have all rights with respect to any and all sublicensees as it had hereunder with respect to ECR prior to termination of this Agreement with respect to ECR, and (iv) ECR shall include in any sublicense a provision in which said sublicensee acknowledges its obligations to NovaDel hereunder and the rights of NovaDel to terminate such sublicense agreement for a material breach of such sublicense agreement by such sublicensee. The failure of ECR to include in a sublicense the provisions referenced in clause (iv) shall render the affected sublicense void.
2.2.5 ECR shall remain responsible for complying with all terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted regardless of whether a sublicensee performs any part of this Agreement, including royalty payments for Net Sales by LicenseeECR’s permitted sublicensees. In addition, ECR shall ensure that each of its sublicensees accepts, and Licensee will be deemed shall use Commercially Reasonable Efforts to be in breach ensure that each of its sublicensees complies with, all of the terms and conditions of this Agreement as if such sublicensees were a result of such act or omissionparty to this Agreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: License and Distribution Agreement (Novadel Pharma Inc)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant Subject to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement Section and otherwise as set forth in the Agreement, LICENSEE may grant or allow Sublicenses through multiple tiers, provided that 1) any such Sublicense shall be an arm’s length transaction to an entity not under the control of LICENSEE, or any of its directors or controllers, and 2) LICENSEE has requested and obtained the prior written approval of UNIVERSITY, which approval shall not be unreasonably withheld. Each Sublicensee shall agree in writing with LICENSEE to accept the conditions and restrictions agreed to by LICENSEE in this Agreement. Sublicenses with any exclusivity must include diligence requirements commensurate with the diligence requirements under this Agreement. Any Sublicense shall state that it is subject to the termination of this Agreement. LICENSEE shall have the same extent responsibility for the activities of any Sublicensee as Licensee has if the activities were directly those of LICENSEE.
(b) For clarity, royalties on Net Sales negotiated and agreed and must acknowledge that Licensor upon under this Agreement are “pass-through” by nature. An earned royalty is an express third party beneficiary calculated as a percentage of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses Net Sales of more limited scope than Licensee’s rights, e.g. in a more limited territory, field Licensed Products of use, LICENSEE or termSublicensees.
(c) The official language LICENSEE will pay to UNIVERSITY twenty percent (20%) of any sublicense agreement shall be Englishall Non-Royalty Sublicensing Consideration.
(d) Within […***…] after entering into a sublicense, Licensor must receive LICENSEE shall provide UNIVERSITY with a copy of each Sublicense and any other agreement that transfers intellectual property rights granted hereunder to a third party (other than routine research and development agreements, such as agreements with contract research organizations), within five (5) days following the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy execution of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but Sublicense or such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyother agreement.
(e) LicenseeNotwithstanding the Sublicensee’s execution of a sublicense agreement will not relieve Licensee of any of its payment obligations under to LICENSEE, LICENSEE shall be directly responsible for all royalties and payments due pursuant to this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date 2.6.1 The rights and the rights licenses granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is 2.1 are sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 2.6 (including Section 2.4.22.6.2).
2.4.2 2.6.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses. Any further sublicenses granted by any Sublicensees (to the extent permitted hereunder) must comply with the provisions of this Section 2.6 (including Section 2.6.2) to the same extent as if Licensee granted such sublicense directly.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing LicensesREGENXBIO Licensors. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensorsthe REGENXBIO Licensors’) ability to ensure compliance with this Agreement; provided that, if any either of Licensor’s licensors require the REGENXBIO Licensors requires a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon (a) Except as set out in item 5 of the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditionsDetails Schedule:
(ai) the Licensee may only grant sublicenses […***…] only pursuant sublicences of the Licence granted to a written sublicense agreement with it under this clause 3 where the Sublicensee. proposed sublicensee is approved by the Licensor must receive written notice as soon as practicable following execution in writing; and
(ii) the Licensor will not unreasonably withhold approval, but may withhold approval (or revoke approval) on reasonable grounds, including based on the risk, financial status or reputation of any such sublicensesthe sublicensee.
(b) In each sublicense agreementExcept where sublicence rights are expressly limited in item 5 of the Details Schedule and subject to the further requirements under this clause 3.3, the Sublicensee must be Licensor approves the sublicence of the Licensed IPR by the Licensee to:
(i) any sublicensees and for the purposes set out in the Commercialisation Business Plan; and
(ii) purchasers of Product, but only to the extent required to comply with enable those customers to receive the terms and conditions benefit of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProduct.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor Licensee must receive a copy ensure that all sublicences of the sublicense written in the English language for Licensor’s records and to share Licensed IPR are consistent with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is Without limitation, unless otherwise approved by the Licensor, the sublicence agreement must include provisions to the effect that:
(i) the sublicensee must observe terms similar to, consistent with and shall remain […***…] to Licensor for all of Licensee’s duties and obligations at least as onerous as those contained in this Agreement so far as they are capable of observance and performance by the sublicensee;
(ii) the sublicence will be personal to the sublicensee and will not be assignable, nor will the sublicensee have the right to sublicense;
(iii) the Licensee may terminate the sublicence without compensation or notice if the sublicensee does anything or omits to do anything which would, if done or omitted to be done by the Licensee, give the Licensor the right to terminate this Agreement;
(iv) such sublicence is capable of being terminated at the Licensor's sole discretion at the same time as the termination of (or exercise by the Licensor of its rights under clause 15.5 in respect of) this Agreement or any licences granted under it; and
(v) the Licensor has audit rights in respect of the sublicensee equivalent to the Licensor’s rights to audit the Licensee under clause 6 of this Agreement.
(d) The Licensee must notify the Licensor promptly of any sublicence entered into and provide the Licensor with a copy of the sublicence terms (excluding financial payment terms and any personal information). In respect of sublicences to purchasers of Products, the Licensee is only required to notify the Licensor of its intention to use a particular form of sublicence.
(e) The acts or omissions of any sublicensee are considered for any act or omission of an Affiliate or Sublicensee that would be a breach the purposes of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach the acts or omissions of this Agreement as a result of such act the Licensee. Guidance Note for clause 3.4: This template does not provide for technology transfer services (eg instruction and training, maintenance services, show- how, help desk or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder personnel support etc). This clause does allow for the parties to a Third Party shall survive termination of this Agreement in accordance with and subject agree to 'Materials' that the Licensor will provide to the terms of Section 6.6.2Licensee to assist with exercising the Licensee's rights. For example, this may include prototypes, samples or documentation. If the Licensee requires additional services, the simplest approach is to use a separate agreement.
Appears in 1 contract
Sublicensing. 2.4.1 Upon 2.3.1 Subject to Sections 2.3.3 and 2.3.4, Bayer, in its sole discretion, shall have the effectiveness of each Grant Date and right to sublicense the rights granted pursuant to under Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee 2.1 to any Affiliates or Third Parties; provided that any such Affiliate of Bayer.
2.3.2 Subject to Sections 2.3.3, 2.3.4 and 2.3.5, (i) Bayer may sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The the right to sublicense grant further sublicenses through multiple tiers of Sublicensees) the rights granted to Licensee Bayer under this Agreement is subject Section 2.1 in the Co-Promotion Territory only upon the prior written consent of Loxo, which Loxo may withhold at its sole discretion and (ii) Bayer may sublicense (including the right to grant further sublicenses through multiple tiers of Sublicensees) the following conditions:
(a) Licensee rights granted to Bayer under Section 2.1 in the ROW Territory to any Third Party upon the prior written consent of Loxo, such consent not to be unreasonably withheld. Notwithstanding the foregoing, Bayer may grant sublicenses […***…] only pursuant sublicense the rights granted under Section 2.1 to a written sublicense agreement with service providers and manufacturers engaged by Bayer to perform activities within the Sublicensee. Licensor must receive written notice as soon as practicable following execution scope of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply rights in accordance with the terms and conditions of the Agreement. For purposes of this Agreement Agreement, each such permitted sublicensee, shall be referred to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term“Sublicensee”.
(c) The official language of 2.3.3 For clarity, any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy granted by Bayer hereunder shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of Bayer from any of its obligations under this Agreement.
2.3.4 Bayer shall ensure that each sublicense agreement shall require the Sublicensee to comply with all relevant obligations of this Agreement, including confidentiality, indemnification and intellectual property ownership. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations Certain confidential information contained in this Agreement document, marked by brackets, has been omitted and for filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. Confidential treatment has been requested with respect to this information.
2.3.5 Bayer shall provide to Loxo a copy of any act or omission of sublicense agreement permitted hereunder (other than to an Affiliate or Sublicensee that would of Bayer) promptly following execution of such sublicense.
2.3.6 IIR Agreements and agreements of a similar nature shall not be a breach deemed sublicenses for the purposes of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionAgreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: License, Development and Commercialization Agreement (Loxo Oncology, Inc.)
Sublicensing. 2.4.1 6.1 The Licensee shall have the right to grant sublicenses with respect to the Technology without the prior written consent of the University; PROVIDED THAT prior to the Licensee granting a sublicense, the Licensee shall provide the University written notice of the terms of the sublicense that are relevant to the University to determine if the terms of the sublicense violate the terms of this Agreement. If such sublicense violates any terms of this Agreement, then the University shall provide a written notice to the Licensee that outlines the manner in which such sublicense allegedly violates the terms of this Agreement (the "Sublicense Notice"). Upon receipt of the effectiveness Sublicense Notice, the Licensee shall have 90 days to cure such default. If at the expiry of each Grant Date and the rights granted 90 days the default has not been cured, then the University shall be able to refer such matter to arbitration for resolution pursuant to Section 2.1.4, Licensee’s rights to 19.2.
6.2 Any sublicense will granted by the Licensee shall be limited personal to the specific Licensed Indication covered Sublicensee and shall not be assignable or further sublicensable without the prior written consent of the University, such consent not to be unreasonably withheld. Such sublicenses shall contain covenants by such license. the Sublicensee to observe and perform similar terms and conditions to those in this Agreement.
6.3 The license Licensee shall furnish the University with a copy of each sublicense granted within 30 days after execution of same.
6.4 Research collaborations, partnerships, joint ventures, joint development agreements, joint marketing agreements, or other arrangements with a third party for the development, testing, and/or test marketing of Products shall not be considered sublicense arrangements subject to any royalty payments that are required to be made pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties5.1 herein; provided that if any such sublicense must comply with arrangements result in Net Sales of Products, then the provisions of this Licensee shall be required to make the royalty payments required by Section 2.4 (including Section 2.4.2)5.1 herein.
2.4.2 The right to sublicense granted to Licensee 6.5 All sublicenses under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided provide that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive upon termination of this Agreement under Section 15, the sublicense shall also terminate. Upon termination of the license for any reason, any Sublicensee not then in accordance with and subject default shall have the right to seek a license from the terms of Section 6.6.2University. The University shall respond to such requests in good faith.
Appears in 1 contract
Sublicensing. 2.4.1 Upon 4.1 The Licensee shall have the effectiveness of each Grant Date and the rights granted pursuant right to Section 2.1.4, Licensee’s rights grant sublicenses to sublicense will be limited third parties with respect to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply Technology with the provisions prior written consent of this Section 2.4 (including Section 2.4.2)the University, not to be unreasonably withheld.
2.4.2 4.2 The Licensee shall have the right to sublicense granted grant sublicenses to Licensee under this Agreement is subject Affiliates with respect to the following conditionsTechnology without the prior written consent of the University, provided that:
(a) the Licensee may grant sublicenses […***…] only pursuant will cause the Affiliate so sublicensed to a written sublicense agreement with perform the Sublicensee. Licensor must receive written notice terms of this Agreement as soon as practicable following execution of any if such sublicenses.Affiliate were the Licensee hereunder; and
(b) In any Affiliate so sublicensed shall unconditionally, absolutely and irrevocably covenant and agree with the University as primary obligor, to adopt as its own obligations every obligation of the Licensee contained or set forth in this Agreement, including without limitation, the covenants in this Agreement to pay any amounts due to the University under the terms of this Agreement. The obligations and liabilities of such Affiliate and the Licensee under this Agreement shall be joint and several and the University shall not be obliged to seek recourse against an Affiliate before enforcing its rights against the Licensee. For greater certainty it is hereby confirmed that any default or breach by an Affiliate of any term of this Agreement will also constitute a default by the Licensee under this Agreement.
4.3 The Licensee will furnish the University with a copy of each sublicense agreement, granted within [*] days after execution.
4.4 Any sublicense (including any sublicense granted to an Affiliate) granted by the Sublicensee must be required Licensee shall contain covenants by the sublicensee to comply with the observe and perform similar terms and conditions to those in this Agreement, including, without limitation, a restriction on the grant of further sublicenses without the University’s consent.
4.5 On granting approval to any sublicense, pursuant to Article 4.1, the University will upon request by the approved sublicensee, provide such sublicensee with a letter confirming that if the University:
(a) gives notice of default to the Licensee pursuant to Article 17.3 of this Agreement, or
(b) takes any other action pursuant to Articles 17.1 or 17.2 of this Agreement to terminate this Agreement, then, prior to any termination of this Agreement, the University will give such sublicensee written notice of such default or intention to terminate this Agreement, and in the event of any breach or default by the Licensee, which may be cured pursuant to Article 17.3, will for [*] days from the date of such notice to the sublicensee, give the sublicensee the opportunity to cure such default or breach on the terms provided in Article 17.3 of this Agreement, mutatis mutandis. If this Agreement is terminated, and provided that the sublicense between the Licensee and the sublicensee is in good standing at such time, the University will then enter into good faith negotiations with such sublicensee for the grant to the sublicensee of a new license substantially on the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations as are contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionAgreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon (a) Except as set out in item 5 of the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditionsDetails Schedule:
(ai) the Licensee may only grant sublicenses […***…] only pursuant sublicences of the Licence granted to a written sublicense agreement with it under this clause 3 where the Sublicensee. proposed sublicensee is approved by the Licensor must receive written notice as soon as practicable following execution in writing; and
(ii) the Licensor will not unreasonably withhold approval, but may withhold approval (or revoke approval) on reasonable grounds, including based on the risk, financial status or reputation of any such sublicensesthe sublicensee.
(b) In each sublicense agreementExcept where sublicence rights are expressly limited in item 5 of the Details Schedule and subject to the further requirements under this clause 3.3, the Sublicensee must be Licensor approves the sublicence of the Licensed IPR by the Licensee to:
(i) any sublicensees and for the purposes set out in the Commercialisation Business Plan; and
(ii) purchasers of Product, but only to the extent required to comply with enable those customers to receive the terms and conditions benefit of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProduct.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor Licensee must receive a copy ensure that all sublicences of the sublicense written in the English language for Licensor’s records and to share Licensed IPR are consistent with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is Without limitation, unless otherwise approved by the Licensor, the sublicence agreement must include provisions to the effect that:
(i) the sublicensee must observe terms similar to, consistent with and shall remain […***…] to Licensor for all of Licensee’s duties and obligations at least as onerous as those contained in this Agreement so far as they are capable of observance and performance by the sublicensee;
(ii) the sublicence will be personal to the sublicensee and will not be assignable, nor will the sublicensee have the right to sublicense;
(iii) the Licensee may terminate the sublicence without compensation or notice if the sublicensee does anything or omits to do anything which would, if done or omitted to be done by the Licensee, give the Licensor the right to terminate this Agreement;
(iv) such sublicence is capable of being terminated at the Licensor's sole discretion at the same time as the termination of (or exercise by the Licensor of its rights under clause 15.4 in respect of) this Agreement or any licences granted under it; and
(v) the Licensor has audit rights in respect of the sublicensee equivalent to the Licensor’s rights to audit the Licensee under clause 6 of this Agreement.
(d) The Licensee must notify the Licensor promptly of any sublicence entered into and provide the Licensor with a copy of the sublicence terms (excluding financial payment terms and any personal information). In respect of sublicences to purchasers of Products, the Licensee is only required to notify the Licensor of its intention to use a particular form of sublicence.
(e) The acts or omissions of any sublicensee are considered for any act or omission of an Affiliate or Sublicensee that would be a breach the purposes of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach the acts or omissions of this Agreement as a result of such act or omissionthe Licensee.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Licence Agreement
Sublicensing. 2.4.1 Upon GSK shall have the effectiveness of each Grant Date and right to grant sublicenses to (a) Affiliates and/or (b) Third Parties for use in any QS-21 Vaccines, to the license rights granted pursuant to GSK in Section 2.1.42.1 above, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following terms and conditions:
(a) Licensee GSK may grant sublicenses to Affiliates and/or Third Parties (i) for Exclusive Vaccines without Antigenics MA’s prior written consent provided that the Sublicensee will practice the Licensed Patent Rights and Licensed Technology only to the extent granted to GSK under this Agreement and GSK and the Sublicensee will comply with the remaining provisions of this Section 2.2; and (ii) for all other QS-21 Vaccines as part of a license or sublicense to GSK’s proprietary adjuvant systems, with Antigenics MA’s consent (such consent not to be unreasonably withheld), provided that the Sublicensee will practice the Licensed […***…] only = Portions of this exhibit have been omitted pursuant to a written sublicense agreement confidential treatment request. An unredacted version of this exhibit has been filed separately with the SublicenseeCommission. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, Patent Rights and Licensed Technology only to the extent granted to GSK under this Agreement and GSK and the Sublicensee must be required to will comply with the terms and conditions remaining provisions of this Section 2.2, and provided further that Antigenics MA receives Sublicense Revenues in accordance with the terms of the License Agreement for at least as long as Antigenics MA has the right to receive payments under the same extent as Licensee has agreed Amended Manufacturing Agreement. For the avoidance of doubt, it shall not be deemed unreasonable for Antigenics MA to withhold consent under Section 2.1(a)(ii) in the event the Third Party Sublicensee is seeking to develop and must acknowledge that Licensor is an express third party beneficiary commercialize their own products containing QS-21 outside of such terms a research, development and/or commercial collaboration or cross-license arrangement with GSK and conditions under such sublicense agreement; provided that nothing Antigenics MA does not receive Sublicense Revenues in accordance with the foregoing. For purpose of clarification, GSK shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, have no obligation to seek prior consent or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive notify and/or provide Antigenics MA a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be the case where GSK grants a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party for research purpose only and does not get any Sublicense Revenue from that Third Party. The right of Antigenics MA to receive Sublicense Revenues as set forth in this paragraph shall survive any expiration or termination of this Agreement in accordance with and subject to the terms of Section 6.6.2Agreement.
Appears in 1 contract
Sublicensing. 2.4.1 Upon Licensee shall have the effectiveness right to grant sublicenses or to assign any or all of each Grant Date and the rights granted pursuant hereunder only to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
an Affiliate; (b) In each sublicense agreementa biopharmaceutical, pharmaceutical or bio-diagnostic company which is generally recognized in such industries and which, at the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy time of the sublicense, is in good standing and has a market capitalization of over $100,000,000; and (c) an entity which has been approved in writing by CSMC; provided, that such approval shall not be unreasonably withheld; provided, further, that the Licensee shall provide such completerequest consent from CSMC by submitting a written request to CSMC’s Technology Transfer Office by electronic mail at CXXxxxXxxxxxxx@xxxx.xxx, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve and CSMC shall advise Licensee of any its decision and of the reason for its obligations decision within thirty (30) days of receiving the request from Licensee. Any sublicensee permitted under this Agreementsubsection (a) or (b) of the preceding sentence shall be referred to as a “Permitted Sublicensee”. In the event CSMC denies a requested sublicense, Licensee is and shall remain […***…] have the right to Licensor petition CSMC in writing for reconsideration of the denial within thirty (30) days. Any such Permitted Sublicensee shall be subject in all of Licensee’s duties and obligations respects to the provisions contained in this Agreement and Licensee will remain primarily liable to CSMC for, and shall be responsible to the best of Licensee’s ability and resources for monitoring and enforcing, performance of all of Licensee’s obligations hereunder by any act or omission such Permitted Sublicensee. Without limiting the generality of the foregoing, as an Affiliate or express condition of any such sublicense, any such Permitted Sublicensee that would shall be a breach required to agree in writing to be bound by commercially reasonable reporting and record keeping, indemnification and inspection provisions, and the applicable provisions of this Agreement if performed or omitted by LicenseeAgreement, including, without limitation, those pertaining to the use of CSMC’s name and marks, indemnification of CSMC and the use of CSMC’s Confidential Information. Permitted Sublicensees may not further sublicense without CSMC’s prior written consent, which consent shall not be unreasonably withheld. Licensee shall promptly forward to CSMC a copy of any and all fully executed sublicense agreements, any subsequent amendments, and all copies of Permitted Sublicensees’ profit sharing or royalty reports, in no event more than thirty (30) days following execution or receipt thereof, as applicable. Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance also keep CSMC reasonably informed with and subject respect to the terms progress of Section 6.6.2any relations entered into with any Permitted Sublicensees. If Licensee shall conduct one or more audits of its Permitted Sublicensees hereunder during the term hereof, Licensee shall provide copies of all audit reports to CSMC on a timely basis. Licensee understands and agrees that none of its permitted sublicenses hereunder shall reduce in any manner any of its obligations set forth in this Agreement.
Appears in 1 contract
Sublicensing. 2.4.1 Upon the effectiveness 6.1 Licensee may sublicense any and all rights licensed hereunder provided that Licensee notifies University in writing and provides University with a copy of each Grant Date sublicense agreement and each amendment thereto within *** days after their execution. Licensee shall have the right to grant sublicensing rights to Sublicensees.
6.2 Licensee shall not grant sublicenses to the rights granted pursuant hereunder for *** or solely ***.
6.3 Licensee shall require that any agreement granting a third party rights to Section 2.1.4the Patent Rights:
(i) be consistent with the terms, conditions and limitations of this Agreement;
(ii) contain the Sublicensee’s acknowledgment of the disclaimer of warranty and limitation on University’s liability, as provided by Article 10 below;
(iii) shall require Sublicensee to indemnify University for any actions of Sublicensee(s);
(iv) provide Licensee the right to assign its rights under the sublicense to University in the event that this Agreement terminates; and
(v) comply with Sections 2.4, 2.5, 13.10, 13.11 and 13.12 of this Agreement.
6.4 Licensee shall require compliance of the applicable terms of this Agreement by each of its Sublicensees under each sublicense agreement.
6.5 If Licensee has exercised the Option, then after the *** of the Effective Date, a party shall provide written notice to the other party of any request made by a third party for a sublicense to develop a Proposed Product in a specific indication not being developed by Licensee and in the territory of ***, within *** of receiving such third party request. For purposes of this Agreement, *** will be considered as a single indication.
6.5.1 In the event that such Proposed Product has not been identified in a Progress Report as under development, in the specific indication requested, then to the extent that such third party is requesting sublicense rights for such Proposed Product in ***, within *** of receiving from or providing to University such written notice of a third party request for a sublicense, Licensee shall elect one of the following options:
(i) provide University with written notice in the form of a Progress Report that Licensee, Affiliate or Sublicensee of either of the foregoing has initiated commercially reasonable efforts to develop, make, use and sell a Licensed Product in the specific indication and *** requested by such third party that is essentially the same as or would commercially compete with the Proposed Product; or
(ii) provide University with written notice in the form of a Progress Report that Licensee, Affiliate or Sublicensee of either of the foregoing has plans to initiate commercially reasonable efforts, within *** of the date said written notice is due University, to develop, make, use and sell a Licensed Product in the specific indication and *** requested by such third party that is essentially the same as or would commercially compete with the Proposed Product; or
(iii) begin good faith negotiations with such third party to sublicense Licensee’s rights in the Patent Rights that are necessary or commercially justifiable for such third party to sublicense will be limited to make, use and sell Proposed Product in the specific Licensed Indication covered indication *** requested by such license. The third party; or
(iv) grant back to University limited rights in the Patent Rights under this Agreement for the sole purpose of allowing University to license granted pursuant the Patent Rights that are necessary or commercially justifiable for such third party to make, use and sell Proposed Product in the specific indication and *** requested by such third party.
(v) As used in this Agreement, *** shall be defined *** categorized as “***” by the ***, which may be found at *** or other similar webpage.
6.5.2 If Licensee elects to negotiate with prospective Sublicensee for a sublicense to develop, make, use and sell the Proposed Product as provided for in Section 2.1.4 6.5.1 (if and when effective) is sublicensable by iii), Licensee shall make a good faith effort to any Affiliates or Third Parties; provided that any such sublicense must comply complete negotiations with the provisions prospective Sublicensee within *** from the date on which it began negotiations (the “Negotiation Period”). For the purposes of this Section 2.4 6.5.2, Licensee shall have made a good faith effort to complete negotiations if it has offered a sublicense to the prospective Sublicensee the terms of which include:
(including Section 2.4.2)i) reasonable financial terms taking into account the field in which the sublicense is being offered and Licensee ’s obligations to University pursuant to this Agreement,
(ii) minimum performance requirements which would not be unreasonably burdensome upon the prospective Sublicensee, and
(iii) non-financial terms which are consistent with Licensee’s obligations to University under this Agreement.
2.4.2 The right to sublicense granted to 6.5.3 Within *** of the end of the *** Negotiation Period, Licensee under this Agreement is subject to the following conditionsshall:
(i) provide University a copy of the fully executed sublicense with such third party, or
(ii) meet with University representatives and provide documentation of reasons that (a) Licensee may grant sublicenses […***…] only pursuant and/or such third party chose not to a written sublicense agreement proceed with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
good faith negotiation or (b) In each sublicense agreement, the Sublicensee must be required to comply with the terms negotiations between Licensee and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express such third party beneficiary of failed.
6.5.4 In the event that Licensee elects to negotiate with prospective Sublicensee for a sublicense to develop, make, use and sell the Proposed Product as provided for in Section 6.5.1 (iii), Licensee fails to make a good faith effort as required by Section 6.5.2 and such terms third party still desires to develop, make use and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. sell Proposed Product in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written specific indication which is not being developed by Licensee and in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy territory of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicenseLeast Developed Countries, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of immediately grant back to University limited rights in its obligations rights in the Patent Rights under this Agreement. Licensee is and shall remain […***…] to Licensor Agreement for all the sole purpose of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of University licensing such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject rights to the terms of Section 6.6.2third party.
Appears in 1 contract
Sublicensing. 2.4.1 Upon 4.01 OXIQUANT agrees that any sublicenses granted by it shall provide that the effectiveness obligations to OHSU of Paragraphs 5.01, 5.02, 9.01, 11.01, 11.02, 13.01-13.03, 14.01-14.09, 15.01 and 17.08-17.11 of this Agreement shall be binding upon any sublicensee as if it were a party to this Agreement. OXIQUANT further agrees to attach copies of these Paragraphs to all sublicense agreements. OXIQUANT further agrees that each sublicense shall contain a provision requiring sublicensee to provide reports to OXIQUANT sufficient to permit OXIQUANT to meet its obligations under Article 10 hereof.
4.02 OXIQUANT agrees to prohibit any sublicensee from further sublicensing, without the consent of OXIQUANT.
4.03 Any sublicenses granted by OXIQUANT shall provide for the termination of the sublicense, or the conversion to a license directly between such sublicensees and OHSU, at the option of the sublicensee, upon termination of this Agreement under Article 14. Such conversion is contingent upon acceptance by the sublicensee of the terms of this Agreement; provided, that each such conversion shall be upon substantially the same royalty rates as were in effect between OXIQUANT and the applicable sublicensee prior to conversion.
4.04 OXIQUANT agrees to forward to OHSU a copy of each Grant Date and fully executed sublicense agreement postmarked within thirty (30) days of the rights granted execution of such agreement.
4.05 In the event of a default by OXIQUANT under Article 14 hereunder that is not cured pursuant to Section 2.1.4the terms of this Agreement, Licensee’s rights all payments then or thereafter due to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee OXIQUANT from each of its sublicensees shall, upon notice from OHSU to any Affiliates or Third Partiessuch sublicensee, become owed directly to OHSU for the account of OXIQUANT; provided that any OHSU shall remit to OXIQUANT the amount by which such sublicense must comply with payments in the provisions aggregate exceed the total amount owed by OXIQUANT to OHSU. Upon cure of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply applicable default by OXIQUANT in accordance with the terms and conditions of this Agreement Agreement, such direct payment from sublicensee to OHSU shall cease, and OXIQUANT shall receive payment from the sublicensee pursuant to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records agreement between OXIQUANT and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copysublicensee.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] 4.06 If OXIQUANT enters into sublicenses, OXIQUANT remains primarily liable to Licensor OHSU for all of LicenseeOXIQUANT’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionAgreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Exclusive License Agreement (Adherex Technologies Inc)
Sublicensing. 2.4.1 Upon GSK shall have the effectiveness right to grant sublicenses, through multiple tiers of each sublicensees, of the license granted to GSK by Mersana under Section 4.1 (License Grant Date to GSK) to its Affiliates and the rights granted pursuant to Section 2.1.4Third Parties (each, Licensee’s rights to sublicense will be limited a “Sublicensee”); provided that, prior to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with expiration of the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […**] and, if Mersana exercises the [*…] only pursuant *], GSK may not, without the prior written consent of Mersana (such consent not to be unreasonably withheld, conditioned or delayed), grant a sublicense to a written sublicense agreement with Third Party to Develop or Commercialize the SublicenseeLicensed Compound or any Licensed Product in the Shared Territory, except for customary sublicenses and subcontracts granted in the ordinary course of business in the Shared Territory (e.g., sublicenses and subcontracts to CMOs, contract research organizations, distributors and other Third Parties performing services on behalf of GSK or any of its Affiliates). Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, Any and all sublicenses shall be in writing and shall require the Sublicensee must be required to comply with the applicable terms and conditions of this Agreement Agreement. With respect to any such sublicense for which Xxxxxxx’s prior written consent is required pursuant to this Section 4.3 (Sublicensing), GSK shall provide Mersana with a copy of any such sublicense agreement with any Third Party within [**] following the execution of such sublicense agreement (which shall be GSK’s Confidential Information); except that any such copy may be reasonably redacted to remove any confidential, proprietary, or competitively sensitive information, as long as such redactions do not adversely affect Xxxxxxx’s ability to understand the scope of rights sublicensed or to confirm that such sublicense agreement complies with all applicable terms and conditions of this Agreement. With respect to any other such sublicense by GSK or any of its Affiliates to a Third Party for which GSK is not required to deliver a copy pursuant to this Section 4.3 (Sublicensing) (a) pursuant to which GSK grants such Third Party the right to [**] the Licensed Compound or any Licensed Product [**], or (b) [**], in each case ((a) or (b)), except for customary sublicenses and subcontracts granted in the ordinary course of business in such Major Market (e.g., sublicenses and subcontracts to CMOs, contract research organizations, distributors and other Third Parties performing services on behalf of GSK or any of its Affiliates), GSK shall promptly deliver notice to Mersana identifying such Third Party, together with a brief summary of the scope of such sublicense grant. GSK shall remain responsible for performance by its Sublicensees of all of its obligations to Xxxxxxx xxxxxxxxx to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of if such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termactivities were conducted by GSK.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Collaboration, Option and License Agreement (Mersana Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee Dicerna may grant written sublicenses […***…] only pursuant (each, a “Sublicense Agreement”) to a written the Licensed Intellectual Property (subject to Section 2.4(b)) solely to Develop, Manufacture and Commercialize Products are solely directed to the treatment of PH1 for use in the Field, including to CMOs; provided, however, that any sublicense agreement with the Sublicensee. Licensor must receive written notice granted by Dicerna shall be subject and, except as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreementset forth below, the Sublicensee must be required subordinate to comply with the terms and conditions of this Agreement and shall contain terms and conditions consistent with those in this Agreement. Dicerna shall assume full responsibility for the performance of all obligations and observance of all terms herein under the licenses granted to it. If Dicerna becomes aware of a material breach of any Sublicense Agreement by a Sublicensee, Dicerna shall promptly notify Protiva of the particulars of same extent and take Commercially Reasonable Efforts to enforce the terms of such Sublicense Agreement. All Sublicense Agreements shall provide that the Sublicensee may only use the Confidential Information of Protiva in accordance with terms of this Agreement applicable to Dicerna’s use of such Confidential Information and subject to provisions at least as Licensee has agreed and must acknowledge that Licensor is stringent as those set forth in Article VI. Dicerna shall use Commercially Reasonable Efforts to make Protiva an express third third-party beneficiary of each CMO Agreement (as defined in the Supply Agreement), and Protiva shall be an express third-party beneficiary of any other Sublicense Agreement, including the provisions related to use and disclosure of Protiva’s Confidential Information. Upon expiration or termination of this Agreement, and provided any Sublicensee is in good standing and has not contributed to the breach or other circumstance that led to any termination, such Sublicense Agreement will remain in full force and effect and Dicerna will be required, until the expiration or termination of each Sublicense Agreement, to: (i) remit to Protiva all royalties or other payments Dicerna receives from any Sublicensee regarding the sale or other disposition of any Products; and (ii) enforce the terms of the Sublicense Agreement at the direction and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses expense of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProtiva.
(cb) The official language of any sublicense agreement Unless otherwise provided in this Agreement, Dicerna shall be English.
(d) Within notify Protiva within […***…] after entering into execution of a sublicense, Licensor must receive Sublicense Agreement and provide a copy of the sublicense written in fully executed Sublicense Agreement to Protiva within the English language for Licensor’s records and same time, which shall be treated as Confidential Information of Dicerna under Article VI. Dicerna may redact any financial or other competitively sensitive information from any Sublicense Agreement prior to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted disclosure to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyProtiva.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4written approval, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing which shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language include prior review of any sublicense agreement by PHS and which shall not be English.
(d) Within unreasonably withheld, Licensee may enter into sublicensing agreements under the Licensed Patent Rights subject to the terms set forth in this Article 4. PHS shall review the sublicense […***…] after entering into a sublicensefrom the date of receipt by PHS. Otherwise, Licensor must receive a copy the approval of PHS shall be considered reached.
4.2 Licensee agrees that any sublicenses granted by it shall provide that the sublicense written in the English language for Licensor’s records obligations to PHS of Paragraphs 5.1-5.4, 8.1, 10.1, 10.2, 12.5, and to share with Licensor’s licensors under the Existing Licenses. The copy 13.8-13.10 of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, as such provisions relate to sublicensees, shall be binding upon the sublicensee as if any it were a party to this Agreement. Licensee further agrees to attach copies of Licensor’s licensors require a complete, unredacted copy these Paragraphs to all sublicense agreements.
4.3 Any sublicenses granted by Licensee shall provide for the termination of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder the conversion to a Third Party shall survive license directly between the sublicensees and PHS, at the option of the sublicensee, upon termination of this Agreement in accordance with and under Article 13. This conversion is subject to PHS approval, not to be unreasonably withheld, and contingent upon acceptance by the terms sublicensee of Section 6.6.2the remaining provisions of this Agreement.
4.4 Licensee agrees to forward to PHS a complete copy of each fully executed sublicense agreement postmarked within thirty (30) days of the execution of the agreement. To the extent permitted by law, PHS agrees to maintain each sublicense agreement in confidence. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE COPY FILED HEREWITH OMITS THE INFORMATION SUBJECT TO A CONFIDENTIALITY REQUEST. OMISSIONS ARE DESIGNATED [***]. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ***Text Omitted and Filed Separately Confidential Treatment Requested Under 17 C.F.R. §§ 200.80(b)(4) and 230.406
Appears in 1 contract
Samples: Patent License Agreement
Sublicensing. 2.4.1 Upon Mist shall have the effectiveness of each Grant Date and right to grant sublicenses under the rights granted grant in Section 2.1 to Affiliates and/or Third Parties pursuant to Section 2.1.4a separate written agreement, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following requirements and conditions:
(a) Licensee may grant sublicenses […***…] only 2.2.1 Mist must obtain NovaDel’s prior written consent in respect of each such sublicense to a Third Party which consent shall not be unreasonably withheld, delayed or conditioned.
2.2.2 Except to the extent the Parties otherwise agree pursuant to the terms of a written particular sublicense granted under this Section 2.2 any sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply fully consistent with the terms and conditions of this Agreement Agreement, and provide that the sublicensee will indemnify NovaDel and its Affiliates to the same extent provided in Section 8.1.1.
2.2.3 Within five (5) Business Days after execution or receipt thereof, as Licensee has agreed applicable, Mist shall provide NovaDel with a full and must acknowledge complete copy of each sublicense agreement granted hereunder and shall deliver copies of all reports relating to the Product (including relating to royalties and other payments) received by Mist from such sublicensees.
2.2.4 Termination of this Agreement by NovaDel with respect to Mist shall not terminate any sublicense granted by Mist pursuant to this Section 2.2 with respect to a sublicensee, provided that Licensor (i) such sublicensee is an express third party beneficiary not in breach of any material provision of this Agreement or the applicable sublicense agreement, (ii) such sublicensee shall perform all obligations of Mist under this Agreement, (iii) NovaDel shall have all rights with respect to any and all sublicensees as it had hereunder with respect to Mist prior to termination of this Agreement with respect to Mist, and (iv) Mist shall include in any sublicense a provision in which said sublicensee acknowledges its obligations to NovaDel hereunder and the rights of NovaDel to terminate such sublicense agreement for a material breach of such sublicense agreement by such sublicensee. The failure of Mist to include in a sublicense the provisions referenced in clause (iv) shall render the affected sublicense void.
2.2.5 During the Term, Mist shall remain responsible for complying with all terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed regardless of whether a sublicensee performs any part of this Agreement, including royalty payments for Net Sales by Mist or omitted its sublicensees and shall be responsible for breaches or non-compliance by Licenseeany such sublicensee. In addition, Mist shall ensure that each of its sublicensees accepts and Licensee will be deemed to be in breach complies with all of the terms and conditions of this Agreement as if such sublicensees were a result of such act or omissionparty to this Agreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder 2.2.6 Nothing herein shall preclude or otherwise prevent Mist or its Affiliates or sublicensees from utilizing the services of a contract sales organization or co-promotion partner to a Third Party shall survive termination of this Agreement Commercialize the Product in accordance with and subject the Territory.
2.2.7 Notwithstanding anything herein to the terms contrary, Mist can utilize the services of Section 6.6.2its Affiliates to Commercialize the Product in the Territory and grant to such Affiliates such licenses and rights as necessary to Commercialize the Product in the Territory and exercise such other rights herein without the consent of NovaDel.
Appears in 1 contract
Samples: License and Distribution Agreement (Novadel Pharma Inc)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. 2.5.1 The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 2.5 (including Section 2.4.22.5.2).
2.4.2 2.5.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be *** Confidential Treatment Requested *** redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon Sage shall have the effectiveness right to grant, and authorize the granting of, sublicenses to any Third Party or to any Affiliate of Sage (collectively “Sublicensees”) under the licenses granted to Sage pursuant to Section 2.1(a); provided that Sage warrants and shall procure, as a condition precedent thereto, that each Grant Date and such Sublicensee shall first be advised of the restrictions set forth in this Agreement with respect to the transfer of the rights sublicensed to such Sublicensee and such Sublicensee shall enter into an agreement (in a form reasonably satisfactory to CyDex, with CyDex named as an intended third party beneficiary) with Sage, or with a higher Sublicensee, pursuant to which such new Sublicensee shall acknowledge and agree to observe and be bound by the applicable restrictions set forth in this Agreement, and Sage shall reasonably promptly deliver to CyDex a true and complete copy of the portions of such agreement which bear on CyDex’s rights (together with a certification from a Sage officer that such provided portions are the only portions of such agreement which bear on CyDex’s rights). Other than as specifically provided in this Section 2.3 and Section 2.4, Sage shall not have the right to grant, or authorize the granting of, sublicenses to any third party under the licenses granted pursuant to Section 2.1.4, Licensee’s rights to sublicense 2.1. Sage shall ensure that all Sublicensees will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the applicable terms and conditions of this Agreement to and shall remain fully responsible for the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. compliance by such Sublicensees with the applicable terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result if such Sublicensees were Sage hereunder. For clarity, Sage may sublicense its rights, and supply Captisol or any Licensed Product, to researchers and research institutions for research or development of such act or omissionany Compound-based Licensed Product, including for any investigator-initiated study of any Compound-based Licensed Product.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Commercial License Agreement (Sage Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee Dicerna may grant written sublicenses […***…] only pursuant (each, a “Sublicense Agreement”) to a written the Licensed Intellectual Property (subject to Section 2.4(b)) solely to Develop, Manufacture and Commercialize Products are solely directed to the treatment of PH1 for use in the Field, including to CMOs; provided, however, that any sublicense agreement with the Sublicensee. Licensor must receive written notice granted by Dicerna shall be subject and, except as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreementset forth below, the Sublicensee must be required subordinate to comply with the terms and conditions of this Agreement and shall contain terms and conditions consistent with those in this Agreement. Dicerna shall assume full responsibility for the performance of all obligations and observance of all terms herein under the licenses granted to it. If Dicerna becomes aware of a material breach of any Sublicense Agreement by a Sublicensee, Dicerna shall promptly notify Protiva of the particulars of same extent and take Commercially Reasonable Efforts to enforce the terms of such Sublicense Agreement. All Sublicense Agreements shall provide that the Sublicensee may only use the Confidential Information of Protiva in accordance with terms of this Agreement applicable to Dicerna’s use of such Confidential Information and subject to provisions at least as Licensee has agreed and must acknowledge that Licensor is stringent as those set forth in Article VI. Dicerna shall use Commercially Reasonable Efforts to make Protiva an express third third-party beneficiary of each CMO Agreement (as defined in the Supply Agreement), and Protiva shall be an express third-party beneficiary of any other Sublicense Agreement, including the provisions related to use and disclosure of Protiva’s Confidential Information. Upon expiration or termination of this Agreement, and provided any Sublicensee is in good standing and has not contributed to the breach or other circumstance that led to any termination, such Sublicense Agreement will remain in full force and effect and Dicerna will be required, until the expiration or termination of each Sublicense Agreement, to: (i) remit to Protiva all royalties or other payments Dicerna receives from any Sublicensee regarding the sale or other disposition of any Products; and (ii) enforce the terms of the Sublicense Agreement at the direction and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses expense of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProtiva.
(cb) The official language of any sublicense agreement Unless otherwise provided in this Agreement, Dicerna shall be English.
(d) Within […notify Protiva within ***…] ** days after entering into execution of a sublicense, Licensor must receive Sublicense Agreement and provide a copy of the sublicense written in fully executed Sublicense Agreement to Protiva within the English language for Licensor’s records and same time, which shall be treated as Confidential Information of Dicerna under Article VI. Dicerna may redact any financial or other competitively sensitive information from any Sublicense Agreement prior to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted disclosure to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyProtiva.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon BSP shall have the effectiveness of each Grant Date right to grant sublicenses to Affiliates and to Third Parties with respect to the rights granted pursuant licensed to BSP under Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties5.1; provided that any Sublicenses to Third Parties shall be subject to Sections 5.2.1 through 5.2.6:
5.2.1 such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right Sublicense shall refer to sublicense granted to Licensee under this Agreement is subject and shall be subordinate to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply and consistent with the terms and conditions of this Agreement to the same extent as Licensee has agreed Agreement, and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to limit the extent that it impairs Licensor’s ability of BSP (individually or any through the activities of its licensors’Sublicensee) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any fully perform all of its obligations under this Agreement or OncoMed’s rights under this Agreement. Licensee is and shall remain ;
5.2.2 […***…] to Licensor ];
5.2.3 BSP shall remain responsible for all the performance of Licensee’s duties and obligations contained in this Agreement and for any act or omission the performance of an Affiliate or its Sublicensees hereunder, and shall cause such Sublicensee that would be a breach to enable BSP to comply with all applicable terms and conditions of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.Agreement;
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party 5.2.4 each Sublicense shall survive terminate immediately upon the termination of this Agreement (in whole or only with respect to the rights that are subject to such Sublicense); however, OncoMed shall have the obligation to license each Sublicensee, at Sublicensee’s option, on substantially similar terms to those granted in such Sublicensee’s respective Sublicense, provided that such Sublicense has not been terminated for such Sublicensee’s breach or insolvency, such Sublicensee is otherwise performing activities in a [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. manner consistent with this Agreement, and the terms and conditions of such Sublicense agreement are consistent with the terms and conditions of this Agreement; and
5.2.5 such Sublicensees shall have the right to grant further Sublicenses of same or lesser scope as its sublicense from BSP under the grants contained in Section 5.1 (the other party to such further sublicense also being a “Sublicensee”), provided that such further Sublicenses shall be in accordance with and subject to all of the terms and conditions of this Section 6.6.25.2 (i.e., such Sublicensee shall be subject to this Section 5.2 in the same manner and to the same extent as BSP).
5.2.6 For purposes of clarity, where BSP retains a Third Party contractor to perform any activity permitted under this Agreement as provided in Section 2.3.9, where such activity is to be performed at the direction and control and for the sole benefit of BSP under any of BSP’s have made, have used, have sold, have offered for sale or have imported rights granted herein, such retention of the Third Party contractor is not a Sublicense within the meaning of this Section 5.2 but is considered an activity of BSP under the license granted in Section 5.1.
Appears in 1 contract
Samples: Collaboration and Option Agreement (OncoMed Pharmaceuticals Inc)
Sublicensing. 2.4.1 Upon If the effectiveness of each Grant Date and license grant under Section 2.1 is exclusive, Licensee has the rights granted pursuant right to Section 2.1.4, Licensee’s rights to sublicense will be limited to grant Sublicense Agreements under the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply Patent Rights consistent with the provisions terms of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is the Agreement, subject to the following conditionsfollowing:
(a) Licensee may grant sublicenses […***…] only Each Sublicensee, including an Affiliate extended rights hereunder pursuant to Section 2.2, must agree in writing to be bound, for the benefit of Licensor, by the terms and conditions of the following Sections of these Terms and Conditions: 2.1(b), 2.3, 2.4, 3.4 (to the extent applicable to the Sublicensee or sub-sublicensee), 4, 5, 6, 7.5, 8, 9, 10, 12, 13, 14, 16, 17, and 18 (for notice to Licensor). To the extent that Licensee permits a written Sublicensee to grant further sub-tier sub-sublicense agreement with agreements, then each such sub-sublicensee shall be considered a “Sublicensee” under the Sublicensee. Licensor Agreement and must receive written notice as soon as practicable following execution also agree in writing to be bound, for the benefit of any such sublicensesLicensor, by the above-referenced Sections.
(b) In each sublicense agreement, the Sublicensee must be required to comply with Each such Sublicense Agreement shall indicate that Licensor is a third party beneficiary of the terms and conditions required by Section 2.3(a), and is entitled to enforce the same. Survival or not of this Sublicensee rights in the event of termination of the Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termbe governed by Section 7.5(b) below.
(c) The official language Licensee shall (and to the extent a Sublicensee is authorized by Licensor to grant further sublicenses, such Sublicensee shall) deliver to Licensor a true, complete, and correct copy of each Sublicense Agreement granted by Licensee, and any modification or termination thereof, within thirty (30) days following the applicable execution, modification, or termination of such Sublicense Agreement, including an English translation if the Sublicense Agreement is not written in English. All such copies shall be considered Confidential Information of Licensee under the Agreement. Licensor’s receipt of such Sublicense Agreement will not constitute a waiver of any sublicense agreement shall be Englishof Licensor’s rights or Licensee’s obligations under the Agreement.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but Notwithstanding any such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Sublicense Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] primarily liable to Licensor for all of the Licensee’s duties and obligations contained in this Agreement the Agreement, and for any act or omission of an Affiliate or a Sublicensee that would be a breach of this the Agreement if performed or omitted by Licensee, and Licensee will be deemed to be a breach by Licensee of the Agreement unless Licensee complies with the remaining provisions of this paragraph. Each Sublicense Agreement will contain a right of termination by Licensee in the event that the Sublicensee breaches the payment obligations affecting Licensor or any other terms and conditions of the Sublicense Agreement that would constitute a breach of this the terms and conditions of the Agreement as a result of if such act or omission.
2.4.3 Any sublicense agreement granted acts were performed by Licensee hereunder (a “Sublicensee Breach”). In the event of a Sublicensee Breach, and if after a reasonable opportunity to cure as provided in any such Sublicense Agreement (not to exceed 30 days for a Third Party shall survive termination of this payment breach and 90 days for a non-payment breach), such Sublicensee fails to cure such Sublicensee Breach, then the Licensee will terminate the Sublicense Agreement within 30 days thereafter unless Licensor agrees in accordance with and subject to the terms of Section 6.6.2writing that such Sublicense Agreement need not be terminated.
Appears in 1 contract
Samples: Patent License Agreement
Sublicensing. 2.4.1 Upon 4.1 LICENSEE shall have the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense all or any part of the rights and licenses granted herein for such periods of time as LICENSEE deems in its best interest and sublicensees shall have the right to Licensee under this Agreement is further sublicense the same, Any sublicense granted by LICENSEE or its sublicensee shall be subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of 'this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is shall contain an express third party beneficiary provision to that effect, No sublicense shall relieve LICENSEE of any of LICENSEE'S obligations under this Agreement unless UNIVERSITY consents in writing to such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termrelease.
(c) The official language 4.2 At the time of granting any sublicense sublicense, LICENSEE shall provide UNIVERSITY a signed photocopy of LICENSEE'S written agreement with the sublicensee, and LICENSEE promptly shall be Englishupon request by UNIVERSITY furnish UNIVERSITY with copies of all accounting and notices between LICENSEE and such sublicensee during the entire life of the sublicense.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of 4.3 In the sublicense written event the rights and licenses granted herein are terminated in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance accordance with this Agreement; provided that, if LICENSEE immediately shall assign to UNIVERSITY any of Licensor’s licensors require and all sublicenses and sublicensees immediately shall begin paying all monies or other consideration due LICENSEE under the sublicense to UNIVERSITY upon notice to such sublicensees from UNIVERSITY and LICENSEE shall include a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copyprovision to this effect in any sublicense granted by LICENSEE.
(e) Licensee’s execution of 4.4 If LICENSEE grants a sublicense agreement will not relieve Licensee of to any of its obligations under this Agreement. Licensee third party owned, in whole or in part, by LICENSEE, or owned, in whole or in part, by an entity which owns LICENSEE, in whole or in part, then any such sublicense shall be on terms such that UNIVERSITY receives the ROYALTY, as provided in Article 5 below, or the SUBLICENSE ROYALTY, whichever is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissiongreater.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon (a) Except as set out in item 5 of the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditionsDetails Schedule:
(ai) the Licensee may only grant sublicenses […***…] only pursuant sublicences of the Licence granted to a written sublicense agreement with it under this clause 3 where the Sublicensee. proposed sublicensee is approved by the Licensor must receive written notice as soon as practicable following execution in writing; and
(ii) the Licensor will not unreasonably withhold approval, but may withhold approval (or revoke approval) on reasonable grounds, including based on the risk, financial status or reputation of any such sublicensesthe sublicensee.
(b) In each sublicense agreementExcept where sublicence rights are expressly limited in item 5 of the Details Schedule and subject to the further requirements under this clause 3.3, the Sublicensee must be Licensor approves the sublicence of the Licensed IPR by the Licensee to:
(i) any sublicensees and for the purposes set out in the Commercialisation Business Plan; and
(ii) purchasers of Product, but only to the extent required to comply with enable those customers to receive the terms and conditions benefit of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProduct.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor Licensee must receive a copy ensure that all sublicences of the sublicense written in the English language for Licensor’s records and to share Licensed IPR are consistent with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is Without limitation, unless otherwise approved by the Licensor, the sublicence agreement must include provisions to the effect that:
(i) the sublicensee must observe terms similar to, consistent with and shall remain […***…] to Licensor for all of Licensee’s duties and obligations at least as onerous as those contained in this Agreement so far as they are capable of observance and for performance by the sublicensee;
(ii) the sublicence will be personal to the sublicensee and will not be assignable, nor will the sublicensee have the right to sublicense;
(iii) the Licensee may terminate the sublicence without compensation or notice if the sublicensee does anything or omits to do anything which would, if done or omitted to be done by the Licensee, give the Licensor the right to terminate this Agreement;
(iv) such sublicence is capable of being terminated at the Licensor's sole discretion at the same time as the termination of (or exercise by the Licensor of its rights under clause 15.4 in respect of) this Agreement or any act or omission licences granted under it; and
(v) the Licensor has audit rights in respect of an Affiliate or Sublicensee that would be a breach the sublicensee equivalent to the Licensor’s rights to audit the Licensee under clause 6 of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionAgreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Licence Agreement (Non Exclusive Commercialisation)
Sublicensing. 2.4.1 Upon written approval from Licensor, Licensee may enter into sublicensing agreements with Sublicensees, provided that Licensee has current exclusive rights thereto in the effectiveness of each Grant Date and the rights granted Territory being sublicensed pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited Section
2.1 and subject to the specific Licensed Indication covered by such license. The license following:
a) Any sublicense granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions a Sublicensee shall incorporate all of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsAgreement, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement which shall be English.
(d) Within […***…] after entering into binding upon each Sublicensee as if such Sublicensee were a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and party to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is shall collect and shall remain […***…] guarantee all payments due Licensor from Sublicensee(s). In each such sublicense, the Sublicensee will be prohibited from granting further sublicenses;
b) If Licensee becomes Insolvent, Licensor’s proportionate share of all payments then or thereafter due and owing to Licensee from its Sublicensees for the sublicense of the Patent Rights will, upon written notice from Licensor to any such Sublicensee, become payable directly to Licensor by Sublicensee for all the account of Licensee’s duties and obligations contained in this Agreement and for any act or omission ;
c) Licensee shall within thirty (30) days of: (a) execution, provide Licensor with a copy of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any each sublicense agreement granted by Licensee hereunder hereunder, and any amendments thereto or terminations thereof; and (b) receipt, summarize and deliver copies of all reports due to a Third Party Licensee from Sublicensee(s); and
d) If this Agreement is terminated for any reason, Licensor shall survive termination have the sole option to (a) terminate any or all sublicense(s) and all rights granted thereunder, or (b) require Licensee to immediately assign all of its right, title, and interest to all sublicense(s) to Licensor, including the right to receive all income from the sublicense(s). Licensee shall, prior to execution of each sublicense, make the intended Sublicensee(s) aware of this Agreement in accordance with and subject to the terms of Section 6.6.2contingency.
Appears in 1 contract
Samples: Swift License Agreement
Sublicensing. 2.4.1 Upon Licensee shall have the effectiveness right to giant sublicenses or to assign any or all of each Grant Date and the rights granted pursuant hereunder only to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
an Affiliate; (b) In each sublicense agreementa biopharmaceutical, pharmaceutical or bio-diagnostic company which is generally recognized in such industries and which, at the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy time of the sublicense, is in good standing and has a market capitalization of over $100,000,000; and (c) an entity which has been approved in writing by CSMC (on behalf Licensors); provided, that such approval shall not be unreasonably withheld; provided, further, that the Licensee shall provide such completerequest consent from CSMC by submitting a written request to CSMC’s Technology Transfer Office by electronic mail at CXXxxxXxxxxxxx@xxxx.xxx, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve and CSMC shall advise Licensee of any its decision and of the reason for its obligations decision within thirty (30) days of receiving the request from Licensee. Any sublicensee permitted under this Agreementsubsection (a) or (b) of the preceding sentence shall be referred to as a “Permitted Sublicensee”. In the event CSMC denies a requested sublicense, Licensee is and shall remain […***…] have the right to Licensor petition CSMC in writing for reconsideration of the denial within thirty (30) days. Any such Permitted Sublicensee shall be subject in all of Licensee’s duties and obligations respects to the provisions contained in this Agreement and Licensee will remain primarily liable for, and shall be responsible to the best of Licensee’s ability and resources for monitoring and enforcing, performance of all of Licensee’s obligations hereunder by any act or omission such Permitted Sublicensee. Without limiting the generality of the foregoing, as an Affiliate or express condition of any such sublicense, any such Permitted Sublicensee that would shall be a breach required to agree in writing to be bound by commercially reasonable reporting and record keeping, indemnification and inspection provisions, and the applicable provisions of this Agreement if performed or omitted by LicenseeAgreement, including, without limitation, those pertaining to the use of the Licensors’ names and marks, indemnification of Licensors and the use of Licensors’ Confidential Information. Permitted Sublicensees may not further sublicense without CSMC’s prior written consent (on behalf of licensors), which consent shall not be unreasonably withheld. Licensee shall promptly forward to CSMC (on behalf of Licensors) a copy of any and all fully executed sublicense agreements, any subsequent amendments, and all copies of Permitted Sublicensees’ profit sharing or royalty reports, in no event more than thirty (30) days following execution or receipt thereof, as applicable. Licensee will be deemed to be in breach shall also keep CSMC (on behalf of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance Licensors) reasonably informed with and subject respect to the terms progress of Section 6.6.2any relations entered into with any Permitted Sublicensees. If Licensee shall conduct one or more audits of its Permitted Sublicensees hereunder during the term hereof. Licensee shall provide copies of all audit reports to CSMC (on behalf of Licensors) on a timely basis. Licensee understands and agrees that none of its permitted sublicenses hereunder shall reduce in any manner any of its obligations set forth in this Agreement.
Appears in 1 contract
Sublicensing. 2.4.1 Upon Takeda shall have the effectiveness of each Grant Date and right to grant sublicenses through multiple tiers with respect to the rights granted pursuant licensed to Takeda under Section 2.1.4, Licensee’s rights 6.1 to sublicense will be limited any Affiliate of Takeda solely in accordance with Sections 6.2.1 through 6.2.5. Takeda shall not have the right to grant Sublicenses with respect to the specific Licensed Indication covered by such license. The license granted pursuant rights licensed to Takeda under Section 2.1.4 (if and when effective) is sublicensable by Licensee 6.1 to any Affiliates Third Party without the prior written consent of Orexigen, which shall not to be unreasonably withheld, conditioned, or Third Parties; provided that any delayed. In the event Orexigen consents to the grant of such sublicense must comply a Sublicense, such Sublicense shall be granted solely in accordance with the provisions of this Section 2.4 (including Section 2.4.2).Sections 6.2.1 through 6.2.5:
2.4.2 The right 6.2.1 such Sublicense shall refer to sublicense granted to Licensee under this Agreement is subject and shall be subordinate to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply and consistent with the terms and conditions of this Agreement to the same extent as Licensee has agreed Agreement, and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to limit either the extent that it impairs Licensor’s ability of Takeda (individually or any through the activities of its licensors’Sublicensee) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any fully perform all of its obligations under this Agreement or Orexigen’s rights under this Agreement. Licensee is ;
6.2.2 in such Sublicense, the Sublicensee shall agree in writing to be bound to Takeda by terms and conditions substantially similar to, or less favorable to the Sublicensee than, the corresponding terms and conditions of this Agreement;
6.2.3 promptly after execution of the Sublicense, and specifically excluding any sublicenses granted to an Affiliate of Takeda, Takeda shall provide a complete and correct copy of such Sublicense to Orexigen;
6.2.4 Takeda shall remain […***…] to Licensor responsible for all the performance of Licensee’s duties and obligations contained in this Agreement and for any act or omission the performance of an Affiliate or its Sublicensees hereunder, and shall cause such Sublicensee that would be a breach to enable Takeda to comply with all applicable terms and conditions of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.Agreement; and
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party 6.2.5 each Sublicense shall survive terminate immediately upon the termination of this Agreement (in accordance whole or only with and respect to the rights that are subject to such Sublicense). For clarity, any references to Sublicense or Sublicensee in Sections 6.2.1 through 6.2.5 shall also mean sublicense or sublicensee, as the terms of Section 6.6.2case may, be with respect to Takeda’s Affiliates.
Appears in 1 contract
Samples: Collaboration Agreement (Orexigen Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon 2.2.1 Subject to the effectiveness terms and conditions of each Grant Date and the ALZA Third Party Licenses, Incline may sublicense the rights granted pursuant to it under Section 2.1.4, Licensee’s rights 2.1 to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any one or more of its Affiliates or Third Parties; provided that Parties at any time. Each such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreementshall be subject and subordinate to, the Sublicensee must be required to comply with and consistent with, the terms and conditions of this Agreement, (b) shall not in any way diminish, reduce or eliminate any of Incline's obligations under this Agreement, (c) shall require each such sublicensee to comply with all applicable terms of this Agreement, including to keep books and records, and permit ALZA to audit (either directly or through an independent auditor) such books and records, and (d) shall provide that any such sublicensee shall not further sublicense except on terms consistent with this Section 2.2. Incline shall provide ALZA with a complete copy of each such sublicense agreement within thirty (30) days after the execution thereof; provided that Incline may redact such portions of any such agreement that do not relate to such sublicense or the terms thereof.
2.2.2 Incline shall remain responsible for its obligations hereunder and for the performance of its sublicensees (including making all payments due to ALZA by reason of any Net Sales of the Products as provided in Section 5.2 and Section 5.3), and shall ensure that any such sublicensees comply with all relevant provisions of this Agreement. In the event of any uncured material breach by any sublicensee under a sublicense agreement that would constitute a material breach of Incline's obligations under this Agreement, Incline shall promptly inform ALZA in writing and shall use Commercially Reasonable Efforts to address such default; provided, however, that any such uncured material breach by such sublicensee of an obligation that would constitute a material breach of Incline's obligations under this Agreement shall be deemed an uncured material breach of Incline hereunder unless Incline cures such material breach within the time and pursuant to the terms provided under Section 10.2 hereof.
2.2.3 Upon an early termination of Incline's license rights under this Agreement, ALZA shall offer any Third Party sublicensee under a sublicense granted by Incline pursuant to Section 2.2.1 that was in effect on the effective date of termination of Incline's license rights under this Agreement the right to enter into a license agreement directly with ALZA on substantially the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under which such sublicense agreement; rights and licenses were granted to such sublicensee, provided that nothing shall prevent Licensee from granting sublicenses such sublicensee (a) is not then in breach of more limited scope than Licensee’s rightsits sublicense, e.g. in a more limited territory(b) agrees to comply with all the terms of this Agreement to the extent applicable to the rights sublicensed to it by Incline, field of use, or term.
and (c) The official language such agreement does not include obligations upon ALZA that exceed the obligations of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations ALZA under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: License and Asset Transfer Agreement (Medicines Co /De)
Sublicensing. 2.4.1 Upon JV-Company shall have the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee in the Exclusive Licensed Business in the Licensed Territory and/or the Non-Exclusive Licensed Business in the Licensed Territory, together with the right under this Agreement is subject to Section 3.2, on the following conditions:terms (for avoidance of doubt, the prior consent of LanzaTech HK is not required for the sublicensing by JV-Company in accordance with this Section 3.3):
(a) Licensee may grant Sublicenses shall be non-exclusive, non-sublicensable sublicenses […***…] that are transferable only pursuant from JV-Company to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.LanzaTech HK under certain conditions;
(b) In each sublicense agreement, JV-Company will notify LanzaTech HK prior to entry into negotiations of a potential Sublicense with a potential Sublicensee where at the Sublicensee must be time of commencement of negotiations there is not a successfully operating existing Commercial Facility for the specific source of the Exclusive Feedstock and/or Non-Exclusive Feedstock; JV-Company is not required to comply obtain the prior consent of LanzaTech HK when granting a sublicense to a third party, provided that JV-Company fully fulfills its obligation under this Section 3.3;
(c) JV-Company shall provide LanzaTech HK with a copy of each executed Sublicense agreement (“Sublicense Agreement”) and ensure the terms and conditions of each Sublicense Agreement complies with the principles of sublicensing established this Agreement Agreement. The Sublicense Agreements shall include the provisions of the Sections set out in Exhibit D to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.largest extent;
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of JV Company shall supervise and cause the sublicense written in Sublicensees to comply with the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information requirements of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s Sublicense Agreements (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.including those provisions set out in Exhibit D);
(e) Licensee’s execution of a sublicense agreement JV-Company will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] collect all payments which are due to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement LanzaTech HK as a result of such act or omissionJV-Company sublicensing its rights under the provisions of this Agreement.
2.4.3 Any sublicense agreement granted (f) JV-Company shall not grant to its Sublicensees any LanzaTech HK rights not conveyed to JV-Company and permitted for Sublicenses by Licensee hereunder this Agreement. The royalty paid to a Third Party LanzaTech HK under Sublicenses for all monies or other consideration of whatever kind received by JV-Company shall survive termination of this Agreement be as set out in accordance with and subject to the terms of Section 6.6.25.
Appears in 1 contract
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses. Any further sublicenses granted by any Sublicensees (to the extent permitted hereunder) must comply with the provisions of this Section 2.4 (including Section 2.4.2) to the same extent as if Licensee granted such sublicense directly.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing LicensesREGENXBIO Licensors. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensorsthe REGENXBIO Licensors’) ability to ensure compliance with this Agreement; provided that, if any either of Licensor’s licensors require the REGENXBIO Licensors requires a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon Licensee shall have the effectiveness right to grant sublicenses, through multiple tiers of each Grant Date sublicensees, under its rights in Patent Rights and Technical Information in accordance with this Section 2.2 (each, “Permitted Sublicensee”). Any such Permitted Sublicensee shall be subject in all respects to the applicable provisions contained in this Agreement and Licensee will remain primarily liable to CSMC for, and shall be responsible for exercising commercially reasonable efforts in monitoring and enforcing, performance of all of Licensee’s applicable obligations hereunder by any such Permitted Sublicensee. Without limiting the generality of the foregoing, as an express condition of any such sublicense, any such Permitted Sublicensee shall be required to agree in writing to be bound by commercially reasonable reporting and record keeping, indemnification and inspection provisions, and the rights granted pursuant to Section 2.1.4applicable provisions of this Agreement, Licensee’s rights to sublicense will be limited including, without limitation, those pertaining to the specific Licensed Indication covered by such licenseuse of CSMC’s name and marks, indemnification of CSMC and the use of CSMC’s Confidential Information. The license granted pursuant Permitted Sublicensees may further sublicense without CSMC’s prior written consent, subject to Section 2.1.4 the foregoing requirements. Licensee shall promptly forward to CSMC a copy of any and all fully executed sublicense agreements, any subsequent amendments, and all copies of Permitted Sublicensees’ profit sharing or royalty reports, in no event more than thirty (if and when effective30) is sublicensable by Licensee to any Affiliates days following execution or Third Parties; receipt thereof, as applicable, provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense foregoing may be redacted to exclude confidential protect any technical or proprietary information of the applicable Sublicensee, but such copy shall any Permitted Sublicensee that is not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability necessary to ensure compliance with this Agreement; provided that, if any . If Licensee shall conduct one or more royalty or payments audits concerning Products in the Territory of Licensor’s licensors require a complete, unredacted copy of its Permitted Sublicensees hereunder during the sublicenseterm hereof, Licensee shall provide copies of all audit reports to CSMC on a timely basis. The covenants pertaining to the use of CSMC’s name and marks, the indemnification of CSMC and the use of CSMC’s Confidential Information in any sublicense or assignment shall run for the benefit of CSMC, who shall be expressly stated as being a third-party beneficiary thereof with respect to such complete, unredacted copy.
(e) Licensee’s execution covenants set forth in this Agreement. Licensee understands and agrees that none of a sublicense agreement will not relieve Licensee of its permitted sublicenses hereunder shall reduce in any manner any of its obligations under set forth in this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Exclusive License Agreement (9 Meters Biopharma, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may Genentech shall have the right to grant sublicenses […***…] only pursuant of the license granted to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of Genentech under Section 6.1 for any such sublicensespurposes.
(b) In each sublicense agreement, Inspire shall have the Sublicensee must be required right to comply with grant sublicenses of the terms and conditions of this Agreement license granted to it under Section 6.2 only to the same extent necessary as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. approved in a more limited territory, field of use, or termwriting in advance by Genentech.
(c) The official language Each of Genentech and Inspire agrees that if either of them sublicenses any rights hereunder to a Third Party, and if at any time either of them conducts or engages a certified public accountant or other person (an "Auditor") to conduct an audit or other examination of the books and records of any such Sublicensee in order to determine the correctness of any royalty payments made pursuant to such sublicense, then it will instruct such Auditor to, as soon as reasonably practicable after the conclusion of such audit or other examination, prepare and provide to the other Party (at such other Party's expense) a brief, summary report of the results thereof; provided, however, that such Auditor, in its summary report or otherwise, shall not disclose to the other Party any information, including but not limited to the royalty percentage payable under such sublicense and any other financial terms of such sublicense, except that such Auditor may disclose to the other Party the fact of a deficiency in royalty payments, and the degree thereof, including the dollar amount. Except as provided under this Section 6.3(c), each Party agrees that nothing in the terms of this Agreement entitles it to review or receive a copy of any sublicense agreement shall be Englishthat sublicenses rights hereunder.
(d) Within […***…] after entering In addition, each of Genentech and Inspire agree that neither of them will sublicense to any Third Party any rights covered by this Agreement except pursuant to a sublicense agreement that includes provisions substantially similar, taking into a account the facts and circumstances of the particular sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licensesas those set forth on Exhibit F hereto. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.---------
(e) Licensee’s execution Each Party agrees to make the other Party a third-party beneficiary of a each sublicense agreement will not relieve Licensee of regarding any of its obligations under rights covered by this Agreement. Licensee is and ; provided, however, that the Party shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted third-party beneficiary only with respect to those provisions enumerated on Exhibit F. ---------
(f) Sections 6.3(c), 6.3(d) and 6.3(e) shall not apply to any sublicenses by Licensee, and Licensee will be deemed Genentech to be in breach of this Agreement as a result of such act or omissionRoche.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Development, License and Supply Agreement (Inspire Pharmaceuticals Inc)
Sublicensing. 2.4.1 Upon Licensee shall have the effectiveness right to grant sublicenses or to assign any or all of each Grant Date and the rights granted pursuant hereunder only to Section 2.1.4an entity which has been approved in writing by CSMC (each, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2" Permitted Sublicensee").
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy which approval shall not be redacted unreasonably withheld or delayed. Any such Permitted Sublicensee shall be subject in all respects to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations provisions contained in this Agreement and Licensee will remain primarily liable to CSMC for, and shall be responsible for monitoring and enforcing, performance of all of Licensee' s obligations hereunder by any act or omission such Permitted Sublicensee. Without limiting the generality of the foregoing, as an Affiliate or express condition of any such sublicense, any such Pe1mitted Sublicensee that would shall be a breach required to agree in writing to be bound by commercially reasonable reporting and record keeping, indemnification and inspection provisions, and the applicable provisions of this Agreement if performed Agreement, including, without limitation, those pertaining to the use of CSMC's name and marks, indemnification of CSMC and the use of CSMC's Confidential Information. Permitted Sublicensees may not further sublicense without CSMC's prior written consent, which consent shall not be unreasonably withheld or omitted by Licenseedelayed. Licensee shall promptly forward to CSMC a copy of any and all fully executed sublicense agreements, any subsequent amendments, and all copies of Permitted Sublicensees ' profit sharing or royalty reports, in no event more than thirty (30) days following execution or receipt thereof, as applicable. Licensee will shall also keep CSMC reasonably informed with respect to the progress of any relations entered into with any Pe1mitted Sublicensees. If Licensee shall conduct one or more audits of its Permitted Sublicensees hereunder during the term hereof, Licensee shall provide copies of all audit reports to CSMC on a timely basis. The covenants pertaining to the use of CSMC's name and marks, the indemnification of CSMC and the use of CSMC's Confidential Information in any sublicense or assignment shall run for the benefit of CSMC, who shall be deemed expressly stated as being a third- party beneficiary thereof with respect to be the covenants set forth in breach this Agreement. Licensee understands and agrees that none of its permitted sublicenses hereunder shall reduce in any manner any of its obligations set forth in this Agreement as a result of such act or omissionAgreement.
2.4.3 Any (a) Royalty-Free Sublicenses. If, and only if, Licensee pays all royalties due CSMC from a Permitted Sublicensee's Net Sales, Licensee may grant that Permitted Sublicensee a royalty-free or non-cash sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2or cross-license.
Appears in 1 contract
Samples: Exclusive License Agreement (Innovest Global, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and (i) Licensee may sublicense the rights granted pursuant in Section 2(a) without the right to Section 2.1.4further sublicense such rights (other than as expressly indicated herein), Licensee’s rights as follows:
A. to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if advertisers, distributors, vendors, suppliers and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply other Persons, with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The no further right to sublicense granted such rights, as necessary or desirable for Licensee to Licensee exercise its own rights under this Agreement is subject the license in Section 2(a), but not for any other use (including any use for their own benefit) by such advertisers, distributors, vendors, suppliers and other Persons (an “Ancillary Sublicense”);
B. to one or more Persons who leases one or more Theme Parks or operates or manages one or more of the following conditions:
Theme Parks on Licensee’s behalf (a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement “Theme Park Operator”), with the Sublicensee. Licensor right of such Theme Park Operator to grant Ancillary Sublicenses but no other sublicenses, provided that Licensee or its agents must receive written notice directly supervise all material aspects of such Theme Parks’ design and operation;
C. as soon permitted in Section 12(b); and
D. to its Affiliates, so long as practicable following execution they remain Affiliates of any such sublicensesLicensee, who have the further sublicensing rights in subsections (A)-(C) above.
(bii) In each Each sublicense agreement, the granted by Licensee or Sublicensee must shall be required to comply with the terms in writing and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge shall provide that Licensor is an express a third party beneficiary of such sublicense, and that Licensor is entitled to enforce directly upon the Sublicensee the terms of this Agreement relating to the Licensed Marks, including the sampling and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termquality control obligations set forth herein.
(ciii) The official language of any Each sublicense agreement shall be Englishnot allow for further sublicensing, except for Ancillary Sublicenses.
(div) Within […***…] after Licensee shall notify Licensor promptly of, and in no event more than ten (10) days after, entering into a sublicense, and upon Licensor’s request, shall provide Licensor must receive with a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but each such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(ev) Licensee shall enforce the terms of each sublicense unless Licensor has agreed with Licensee that enforcement may be waived.
(vi) Licensee shall remain liable to Licensor hereunder for any and all damages suffered by Licensor or its Affiliates due to acts or omissions of any Sublicensee under any sublicense as if such acts or omissions were made by Licensee directly, provided that Licensor may not make a duplicate recovery against both Licensee and any Sublicensee with respect to any such same act or omission. A material breach by a Sublicensee of its sublicense (and Licensee’s execution of failure to prevent same) shall not constitute a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a material breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach for purposes of termination this Agreement as pursuant to Section 7(c)(i) unless (y) such Sublicensee does not cure such material breach within forty-five (45) days after (1) receipt of notice from either Licensor (with a result copy to Licensee) or Licensee or (2) Licensor notifying Licensee of such act matter, or omission(z) Licensee has not, after using reasonable best efforts to have its Sublicensee cure such material breach, terminated the applicable sublicense at the end of such forty-five (45) day period.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Trademark License Agreement (SeaWorld Entertainment, Inc.)
Sublicensing. 2.4.1 Upon Avigen shall be entitled to grant sublicenses of its rights under this Agreement through one or more tiers of sublicensees without consent, including to its Affiliates and to Third Parties, provided that all of the effectiveness following are satisfied:
2.3.1 Avigen notifies SDI in writing the identity of each Grant Date and Sublicensee within thirty (30) days after granting the rights granted pursuant sublicense.
2.3.2 The sublicense shall include obligations on the Sublicensee which are sufficient to Section 2.1.4allow Avigen to fulfil its obligations under this Agreement (e.g., Licenseethe Sublicensee shall report its Net Sales to Avigen on a timeline that enables Avigen to make any royalty payments on the Sublicensee’s rights to sublicense will be limited to the specific Licensed Indication covered Net Sales required by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2Agreement in a timely manner).
2.4.2 2.3.3 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions shall terminate automatically on termination of this Agreement under Section 10.2.3 for Avigen’s uncured material breach or insolvency or under Section 10.2.2 by Avigen at will. Avigen shall notify its Sublicensees promptly (within 30 days) after any such termination of this Agreement. If within 30 days of such notification a Sublicensee notifies SDI in writing that the Sublicensee wishes its sublicensed rights to continue as a direct license from SDI for the then remainder of the term of its sublicense, SDI may grant to the Sublicensee a direct license on the same extent terms as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of the sublicense provided such terms are in SDI’s reasonable view no more onerous and conditions under such sublicense agreementno less favorable to SDI than the terms of this Agreement. * = confidential treatment requested; provided that nothing shall prevent Licensee from granting sublicenses certain confidential information, in the places marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of more limited scope than Licensee’s rightsthe Securities Exchange Act of 1934, e.g. in a more limited territory, field of use, or termas amended.
(c) The official language 2.3.4 Within 30 days of the grant of any sublicense agreement Avigen shall be English.
(d) Within […***…] after entering into provide to SDI a sublicense, Licensor must receive a true copy of such portions of the sublicense written in the English language for Licensor’s records and as are necessary to share with Licensor’s licensors under the Existing Licenses. The copy of verify that the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance is in accordance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.and
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and 2.3.5 Avigen shall remain […***…] responsible to Licensor for all of Licensee’s duties and obligations contained in this Agreement and SDI for any act or omission of an Affiliate or a Sublicensee that would be to the extent it constitutes a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionthe Agreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Patent and Know How License, Development and Commercialization Agreement (Avigen Inc \De)
Sublicensing. 2.4.1 Upon Licensee shall have the effectiveness right to grant sublicenses or to assign any or all of each Grant Date and the rights granted pursuant hereunder only to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
an Affiliate; (b) In each sublicense agreementa biopharmaceutical, pharmaceutical or bio-diagnostic company which is generally recognized in such industries and which, at the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy time of the sublicense, is in good standing and has a market capitalization of over $100,000,000; and (c) an entity which has been approved in writing by CSMC; provided, that such approval shall not be unreasonably withheld; provided, further, that the Licensee shall provide such completerequest consent from CSMC by submitting a written request to CSMC’s Technology Transfer Office by electronic mail at CXXxxxXxxxxxxx@xxxx.xxx, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve and CSMC shall advise Licensee of any its decision and of the reason for its obligations decision within thirty (30) days of receiving the request from Licensee. Any sublicensee permitted under this Agreementsubsection (a) or (b) of the preceding sentence shall be referred to as a “Permitted Sublicensee”. In the event CSMC denies a requested sublicense. Licensee is and shall remain […***…] have the right to Licensor petition CSMC in writing for reconsideration of the denial within thirty (30) days. Any such Permitted Sublicensee shall be subject in all of Licensee’s duties and obligations respects to the provisions contained in this Agreement and Licensee will remain primarily liable to CSMC for, and shall be responsible to the best of Licensee’s ability and resources for monitoring and enforcing, performance of all of Licensee’s obligations hereunder by any act or omission such Permitted Sublicensee. Without limiting the generality of the foregoing, as an Affiliate or express condition of any such sublicense, any such Permitted Sublicensee that would shall be a breach required to agree in writing to be bound by commercially reasonable reporting and record keeping, indemnification and inspection provisions, and the applicable provisions of this Agreement if performed or omitted by LicenseeAgreement, including, without limitation, those pertaining to the use of CSMC’s name and marks, indemnification of CSMC and the use of CSMC’s Confidential Information. Permitted Sublicensees may not further sublicense without CSMC’s prior written consent, which consent shall not be unreasonably withheld. Licensee shall promptly forward to CSMC a copy of any and all fully executed sublicense agreements, any subsequent amendments, and all copies of Permitted Sublicensees’ profit sharing or royalty reports, in no event more than thirty (30) days following execution or receipt thereof, as applicable. Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance also keep CSMC reasonably informed with and subject respect to the terms progress of Section 6.6.2any relations entered into with any Permitted Sublicensees. If Licensee shall conduct one or more audits of its Permitted Sublicensees hereunder during the term hereof. Licensee shall provide copies of all audit reports to CSMC on a timely basis. Licensee understands and agrees that none of its permitted sublicenses hereunder shall reduce in any manner any of its obligations set forth in this Agreement.
Appears in 1 contract
Sublicensing. 2.4.1 Upon 8.1 The LICENSEE has the effectiveness exclusive right to grant sublicenses to its rights granted under Article 3 to Affiliates and Sublicensees.
8.2 The LICENSEE shall notify MICHIGAN in writing of every sublicense agreement and each Grant Date material amendment thereto, and indicate the name of the Sublicensee or Affiliate, the territory of the sublicense, the scope of the sublicense, and the rights granted pursuant nature, timing and amounts of all sublicensing fees and royalties to Section 2.1.4be paid thereunder. Such notice shall be provided to MICHIGAN at the same time as the Royalty reports. [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
8.3 The LICENSEE shall ensure that its agreements with Affiliates and Sublicensees impose no obligations upon MICHIGAN, Licenseedo not authorize conduct from which the LICENSEE is prohibited in engaging by this Agreement, contain an agreement or covenant not to xxx MICHIGAN for claims relating to the Technology, Licensed Patents, and/or the terms of the Sublicense agreement and not to assist others in suing MICHIGAN, and impose contractual conditions sufficient to permit the LICENSEE to be accountable to MICHIGAN as required by this Agreement (for example, the duty to maintain records sufficient to permit accurate royalty calculations, the duty to restrict the use of MICHIGAN’s name, and the duty to properly xxxx Products with patent notices), and contain an acknowledgment of MICHIGAN’s rights in the Licensed Patents. If practicable, the LICENSEE shall seek to include provisions in the sublicense will be limited agreement whereby the limitations of liability, disclaimers of warranty, insurance, indemnification, hold harmless, duty to defend, and other risk management terms inure to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions benefit of this Section 2.4 (including Section 2.4.2)MICHIGAN.
2.4.2 The 8.4 LICENSEE shall cause every sublicense to provide LICENSEE the right to assign its rights under the sublicense granted to Licensee under this Agreement MICHIGAN. Any such assignment is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant limitations of Article 15 herein and, to a written sublicense agreement with the Sublicensee. Licensor be effective, MICHIGAN must receive written notice as soon as practicable following execution of any first accept such sublicensesassignment in writing.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive 8.5 Upon termination of this Agreement or the license set forth in Paragraph 3.1, any sublicense agreement between LICENSEE and a Sublicensee may continue in force in accordance with and subject its terms (but without any renewals, extensions or the like unless specifically agreed to in writing by MICHIGAN) if all of the following conditions are met: (1) each sublicense agreement with Sublicensees is consistent with the terms of Section 6.6.2this Agreement; (2) each sublicense agreement incorporate with full force and effect therein the document attached hereto as Exhibit A; (3) said Sublicensee is not then in default of its material obligations under its sublicense agreement; and (4) the termination of this Agreement occurs at least one year after the Effective Date. The specific language of Exhibit A may be amended only by mutual written agreement of the Parties. Any sublicense agreement that does not meet each of these conditions shall terminate concurrently with the termination of this Agreement or the license provided under Paragraph 3.1 herein.
8.6 Upon termination of this Agreement, sublicense agreements between LICENSEE and its Affiliates may be assigned to MICHIGAN by agreement in writing of the Affiliate and MICHIGAN. If MICHIGAN and the Affiliate(s) do not reach such an agreement, the sublicense agreement shalt be deemed terminated as of the same date the license from MICHIGAN to LICENSEE terminates.
Appears in 1 contract
Sublicensing. 2.4.1 (a) LICENSEE shall have no right or power to grant sublicenses of the LICENSED CELL LINE, under section 21. (a), except LICENSEE shall have the right to sublicense third parties to make the LICENSED MONOCLONAL ANTIBODY on behalf of LICENSEE solely for the use of LICENSEE, its AFFILIATES and sublicensees subject to FHCRC's prior written consent, which consent shall not be unreasonably withheld. If FHCRC does not respond in thirty (30) days to written request for consent from LICENSEE, such non-response shall constitute consent by FHCRC hereunder. In addition to any other requirements imposed under this Agreement, a sublicense of the LICENSED CELL LINE shall require that the LICENSED CELL LINE be maintained in and not transferred from the United States and will prohibit the sublicensee from sublicensing or otherwise transferring the LICENSED CELL LINE to any other person or entity. Upon the effectiveness prior written approval of each Grant Date FHCRC, which shall not be unreasonably withheld, LICENSEE may sublicense on third party to make the LICENSED MONOCLONAL ANTIBODY in Europe on behalf of LICENSEE solely for the use of LICENSEE, its AFFILIATES and the rights granted pursuant sublicensees upon terms and conditions agreeable to Section 2.1.4, Licensee’s rights to FHCRC. A determination by FHCRC that a sublicense will affect adversely its rights in the LICENSED CELL LINE or the LICENSED MONOCLONAL ANTIBODY or its ability to enforce those rights shall be limited deemed a reasonable basis to the specific Licensed Indication covered by such license. The license granted pursuant withhold consent to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions for purposes of this Section 2.4 (including Section 2.4.22.2(a).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreementLICENSEE may grant and authorize sublicenses to permit third parties to perform LICENSED SERVICES and to make, have made, use and sell LICENSED PRODUCTS (but not the Sublicensee must be required to comply with LICENSED CELL LINE) within the terms and conditions scope of the License described in Section 2.1(b) of this Agreement with FHCRC's prior written consent, which consent will not be unreasonably withheld. If FHCRC does not respond in thirty (30) days to written request for consent from LICENSEE, such non-response shall constitute consent by FHCRC hereunder. All sublicenses granted by LICENSEE under this Section 2.2(b) shall include a requirement that the sublicensesee use reasonable efforts to introduce the LICENSED PRODUCTS into the commercial market as soon as reasonably possible, consistent with sound and reasonable business practices and judgment, and thereafter endeavor to keep LICENSED PRODUCTS reasonably available to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termpublic.
(c) The official language In addition to any other requirements of this Agreement, any sublicense agreement under this Section 2.2 shall bind the sublicensee to meet all LICENSEE's obligations to FHCRC under this Agreement. Royalties charged for sublicenses by LICENSEE shall be commercially reasonable. LICENSEE shall promptly provide FHCRC with a copy of any sublicense agreement shall be Englishsubject to the confidentiality provisions of Article 10 of this Agreement.
(d) Within […***…] after entering into a sublicenseNotwithstanding 2.2 (a)-(c), Licensor must receive a copy LICENSEE may transfer the LICENSED MONOCLONAL ANTIBODY to third parties, and if required by such third party, sublicense the LICENSED MONOCLONAL ANTIBODY for the purpose of testing, analysis, development or manufacturing of LICENSED PRODUCTS or LICENSED SERVICES to be sold or offered for sale by LICENSEE or authorized sublicensees; provided that the sublicense written third party to whom the transfer is made has agreed (1) in writing to use the English language LICENSED MONOCLONAL ANTIBODY solely for Licensor’s records that limited purpose and has agreed (2) not to share with Licensor’s licensors under make, use or sell or offer for sale or otherwise distribute or exploit the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (LICENSED MONOCLONAL ANTIBODY or any LICENSED PRODUCT or LICENSED SERVICE and (3) to be bound by the Confidentiality provisions in Article 10 of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Non Exclusive License Agreement (Xcyte Therapies Inc)
Sublicensing. 2.4.1 Upon Company shall have the effectiveness of each Grant Date and right to sublicense, through multiple tiers, the rights granted pursuant licensed to Section 2.1.4Company hereunder, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditionsthat:
(a) Licensee may grant sublicenses […***…] only pursuant Any and all Sublicenses shall be in writing (and Company shall provide a copy of all such Sublicenses to a written sublicense agreement Flagship upon execution) and consistent with the Sublicensee. Licensor must receive written notice as soon as practicable following execution terms of any such sublicensesthis Agreement (including an assignment of Foundational IP to Company, with a right of further transfer to Flagship, consistent with Section 2.1 and reversion rights consistent with Section 2.7).
(b) In each Company shall notify Flagship in writing of any proposed grant of a Sublicense and provide to Flagship a copy of any proposed Sublicense at least [***] Business Days prior to execution thereof for review and comment by Flagship, which comments Company shall not unreasonably refuse to incorporate therein. Company hereby agrees to remain fully liable under this Agreement to Flagship for the performance or non-performance under this Agreement and the relevant Sublicense by any party to those agreements.
(c) Company shall enforce all such Sublicenses against its Sublicensees, ensuring its Sublicensees’ performance in accordance with the terms of this Agreement and the relevant Sublicense. No such Sublicense or attempt to obtain a Sublicense shall relieve Company of its obligations hereunder to exercise its Commercially Reasonable Efforts pursuant to Section 3.1, directly or through a Sublicensee, to Develop and Commercialize Licensed Products, nor relieve Company of its obligations to pay Flagship any and all royalties and other payments due under this Agreement.
(d) Such Sublicensees shall have the right to grant further sublicenses to Third Parties of same or lesser scope as its sublicense agreementfrom Company under the licenses contained in Section 2.2, the Sublicensee must provided that such further Sublicenses shall be required in accordance with and subject to comply with all of the terms and conditions of this Agreement Section 2.3 (i.e., such Sublicensee shall be subject to this Section 2.3 in the same manner and to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsCompany). For clarity, e.g. in any Entity to whom a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of Sublicensee grants a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach as permitted by the terms of this Agreement if performed or omitted by Licensee, and Licensee will shall be deemed to be in breach a Sublicensee for purposes of this Agreement as a result of such act or omissionAgreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon Licensee shall have the effectiveness right to grant sublicenses or to assign (subject to Section 13.11) any or all of each Grant Date and the rights granted pursuant hereunder to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with public companies listed on the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
NYSE, NYSE MKT, NYSE Arca or NASDAQ stock exchanges; (b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreementprivate companies having at least $25 million in annual sales; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement entities which have been approved in writing by CSMC (such consent not to be unreasonably withheld) (each, “Permitted Sublicensee”). Any such Permitted Sublicensee shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written subject in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted all respects to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations provisions contained in this Agreement and Licensee will remain primarily liable to CSMC for, and shall be responsible for monitoring and enforcing, performance of all of Licensee’s obligations hereunder by any act or omission such Permitted Sublicensee. Without limiting the generality of the foregoing, as an Affiliate or express condition of any such sublicense, any such Permitted Sublicensee that would shall be a breach required to agree in writing to be bound by commercially reasonable reporting and record keeping, indemnification and inspection provisions, and the applicable provisions of this Agreement if performed or omitted by LicenseeAgreement, including, without limitation, those pertaining to the use of CSMC’s name and marks, indemnification of CSMC and the use of CSMC’s Confidential Information. Permitted Sublicensees may not further sublicense without CSMC’s prior written consent, which consent shall not be unreasonably withheld. Licensee shall promptly forward to CSMC a copy of any and all fully executed sublicense agreements, any subsequent amendments, and all copies of Permitted Sublicensees’ profit sharing or royalty reports, in no event more than thirty (30) days following execution or receipt thereof, as applicable. Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance also keep CSMC reasonably informed with and subject respect to the terms progress of Section 6.6.2any relations entered into with any Permitted Sublicensees. If Licensee shall conduct one or more audits of its Permitted Sublicensees hereunder during the term hereof, Licensee shall provide copies of all audit reports to CSMC on a timely basis. The covenants pertaining to the use of CSMC’s name and marks, the indemnification of CSMC and the use of CSMC’s Confidential Information in any sublicense or assignment shall run for the benefit of CSMC, who shall be expressly stated as being a third-party beneficiary thereof with respect to the covenants set forth in this Agreement. Licensee understands and agrees that none of its permitted sublicenses hereunder shall reduce in any manner any of its obligations set forth in this Agreement.
Appears in 1 contract
Samples: Exclusive License Agreement (Synthetic Biologics, Inc.)
Sublicensing. 2.4.1 Upon With respect to the effectiveness of each Grant Date licenses and sublicenses granted to Hana under Section 2.1, subject to the terms and conditions set out in the BCCA Agreements and the rights granted pursuant MD Xxxxxxxx License and Hana’s assumption of any and all license fees, annual fees, milestone payments and royalty obligations set forth in this Agreement, Hana shall have the right to Section 2.1.4, Licensee’s rights grant sublicenses to sublicense will be limited its Affiliates and to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of .
2.4.2 All sublicensees granted under this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is shall be subject to the following conditionsfollowing:
(a) Licensee Hana will cause each Affiliate so sublicensed to perform the terms of this Agreement as if such Affiliate were Hana hereunder;
(b) each Affiliate so sublicensed shall unconditionally, absolutely and irrevocably covenant and agree with INEX as primary obligor, to adopt as its own obligations every obligation of Hana contained or set forth in this Agreement to the extent pertinent to scope of such sublicense;
(c) Hana unconditionally guarantees the performance of each Affiliate hereunder as if they were signatories to this Agreement to the extent the performance or lack of performance is a breach of this Agreement;
(d) the obligations and liabilities of each Affiliate and Hana under this Agreement shall be joint and several and INEX shall not be obliged to seek recourse against an Affiliate before enforcing its rights against Hana. For greater certainty it is hereby confirmed that any default or breach by an Affiliate of any term of this Agreement will also constitute a default by Hana under this Agreement, and INEX shall be entitled to exercise its rights hereunder, in addition to any other rights and remedies to which INEX may be entitled;
(e) each sublicense shall contain covenants by the Third Party Sublicensee for the benefit of INEX to observe and perform similar terms and conditions to those in this Agreement;
(f) all sublicenses granted by Hana shall be further sublicensable or assignable without the prior written consent of INEX; provided, however, that Hana shall not sublicense any rights granted herein to any Person that in whole or in part, either alone or in partnership, in collaboration or in conjunction with any Person other than INEX, whether as principal, agent, employee, director, officer, shareholder, licensor or in any capacity or manner whatsoever, whether directly or indirectly manufactures liposomal products without first either: (i) obtaining INEX’s written consent; or (ii) including in such sublicense a provision requiring the sublicense to agree that it will not use the INEX Technology for any purpose other than the Products;
(g) in the event that Hana becomes aware of a material breach of any such sublicense by a Third Party Sublicensee, Hana shall promptly notify INEX of the particulars of same and take all commercially reasonable steps to enforce the terms of such sublicense;
(h) within ten (10) Business Days after execution of a sublicensing agreement, Hana shall provide INEX with a copy thereof (provided that Hana shall be permitted to redact the financial terms of such agreement);
(i) all sublicenses shall terminate upon the termination of Hana’s rights granted herein unless events of default are cured by Hana or its Sublicensee within the period for the cure of default after notification by INEX as provided by the terms of this Agreement;
(j) any Sublicensee who wishes to grant sublicenses […***…] only pursuant to a written further sublicense agreement shall comply with the Sublicensee. Licensor must receive written notice terms of this Section as soon as practicable following if the further sublicense were a sublicense hereunder, including providing to INEX and Hana the information described in this Section, and obtaining the consent referred to in this Section, prior to any execution of any such sublicensessub-sublicense;
(k) all sublicenses shall include an obligation for each Sublicensee to account for and report its sales of Product on the same basis as if such sales were sales of Hana, and INEX shall receive compensation in the same amounts as if the sales of Product by the Sublicensee were sales of Hana; and
(l) Hana shall remain responsible to INEX for the compliance of each Sublicensee with the financial and other obligations due under this Agreement.
(b) In each sublicense agreement2.4.3 With respect to the licenses granted to INEX under Section 2.2, INEX shall have the Sublicensee must right to grant sublicenses to its Affiliates and to Third Parties. All sublicenses will be required to comply consistent with the terms and conditions of this Agreement to the same extent as Licensee has agreed Agreement, shall not relieve Hana or INEX of their obligations hereunder, and must acknowledge that Licensor is an express third party beneficiary of such shall incorporate terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting for Hana’s benefit comparable to those set forth in Section 2.4.2 applicable to sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2Hana.
Appears in 1 contract
Sublicensing. 2.4.1 Upon GSK shall have the effectiveness of each Grant Date and right to grant sublicenses to (a) Affiliates and/or (b) Third Parties for use in any QS-21 Vaccines, to the license rights granted pursuant to GSK in Section 2.1.42.1 above, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following terms and conditions:
(a) Licensee GSK may grant sublicenses to Affiliates and/or Third Parties (i) for Exclusive Vaccines without Antigenics MA’s prior written consent provided that the Sublicensee will practice the Licensed Patent Rights and Licensed Technology only to the extent granted to GSK under this Agreement and GSK and the Sublicensee will comply with the remaining provisions of this Section 2.2; and (ii) for all other QS-21 Vaccines as part of a license or sublicense to GSK’s proprietary adjuvant systems, with Antigenics MA’s consent (such consent not to be unreasonably withheld), provided that the Sublicensee will practice the Licensed […***…] only = Portions of this exhibit have been omitted pursuant to a written sublicense agreement confidential treatment request. An unredacted version of this exhibit has been filed separately with the SublicenseeCommission. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, Patent Rights and Licensed Technology only to the extent granted to GSK under this Agreement and GSK and the Sublicensee must be required to will comply with the terms and conditions remaining provisions of this Section 2.2, and provided further that Antigenics MA receives Sublicense Revenues in accordance with the terms of the License Agreement for at least as long as Antigenics MA has the right to receive payments under the same extent as Licensee has agreed Amended Manufacturing Agreement. For the avoidance of doubt, it shall not be deemed unreasonable for Antigenics MA to withhold consent under Section 2.1(a)(ii) in the event the Third Party Sublicensee is seeking to develop and must acknowledge that Licensor is an express third party beneficiary commercialize their own products containing QS-21 outside of such terms a research, development and/or commercial collaboration or cross-license arrangement with GSK and conditions under such sublicense agreement; provided that nothing Antigenics MA does not receive Sublicense Revenues in accordance with the foregoing. For purpose of clarification, GSK shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, have no obligation to seek prior consent or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive notify and/or provide Antigenics MA a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be the case where GSK grants a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party for research purpose only and does not get any Sublicense Revenue from that Third Party. The right of Antigenics MA to receive Sublicense Revenues as set forth in this paragraph shall survive any expiration or termination of this Agreement. In addition, for purposes of clarity, the title of Section 10.4 of the License Agreement in accordance with is hereby amended to read: “Termination or Continuation for Bankruptcy of Antigenics MA; Effects of Termination of this Agreement”, and subject Section 10.4(c) of the License Agreement is hereby amended by adding reference to Section 2.2 to the terms second sentence. For the avoidance of Section 6.6.2doubt, upon expiration of the License Agreement any existing Sublicensee or further Sublicensee shall continue to be a direct Sublicensee(s) of GSK and not become a direct licensee of Antigenics MA.
Appears in 1 contract
Samples: First Right to Negotiate and Amendment Agreement (Agenus Inc)
Sublicensing. 2.4.1 Upon Takeda shall have the effectiveness of each Grant Date and right to grant sublicenses through multiple tiers with respect to the rights granted pursuant licensed to Takeda under Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee 6.1 to any Affiliates or Third Parties; provided that any such sublicense must comply Affiliate of Takeda solely in accordance with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses Sections 6.2.1 through 6.2.5. Takeda […***…] only pursuant with respect to the rights licensed to Takeda under Section 6.1 to any Third Party […***…] of Orexigen, which shall not to be unreasonably withheld, conditioned, or delayed. In the event Orexigen consents to the grant of such a written sublicense agreement Sublicense, such Sublicense shall be granted solely in accordance with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any Sections 6.2.1 through 6.2.5:
6.2.1 such sublicenses.
(b) In each sublicense agreement, the Sublicensee must Sublicense shall refer to this Agreement and shall be required subordinate to comply and consistent with the terms and conditions of this Agreement to the same extent as Licensee has agreed Agreement, and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to limit either the extent that it impairs Licensor’s ability of Takeda (individually or any through the activities of its licensors’Sublicensee) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any fully perform all of its obligations under this Agreement or Orexigen’s rights under this Agreement. Licensee is ;
6.2.2 in such Sublicense, the Sublicensee shall agree in writing to be bound to Takeda by terms and conditions substantially similar to, or less favorable to the Sublicensee than, the corresponding terms and conditions of this Agreement;
6.2.3 promptly after execution of the Sublicense, and specifically excluding any sublicenses granted to an Affiliate of Takeda, Takeda shall provide a complete and correct copy of such Sublicense to Orexigen;
6.2.4 Takeda shall remain […***…] to Licensor responsible for all the performance of Licensee’s duties and obligations contained in this Agreement and for any act or omission the performance of an Affiliate or its Sublicensees hereunder, and shall cause such Sublicensee that would be a breach to enable Takeda to comply with all applicable terms and conditions of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.Agreement; and
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party 6.2.5 each Sublicense shall survive terminate immediately upon the termination of this Agreement (in accordance whole or only with and respect to the rights that are subject to such Sublicense). For clarity, any references to Sublicense or Sublicensee in Sections 6.2.1 through 6.2.5 shall also mean sublicense or sublicensee, as the terms of Section 6.6.2case may, be with respect to Takeda’s Affiliates.
Appears in 1 contract
Samples: Collaboration Agreement (Orexigen Therapeutics, Inc.)
Sublicensing. 2.4.1 Upon Gritstone may grant sublicenses under Licensed Intellectual Property licensed under Section 2.1 (with the effectiveness right to sublicense through multiple tiers only as set forth in this Section 2.2) (each, a “Sublicense”); provided that:
(a) Gritstone shall not have the right to grant a Sublicense (and no Affiliate of Gritstone or Sublicensee shall have the right to grant a sub-Sublicense) (i) to [***] or (ii) with respect to Products that [***], in each Grant Date case (clauses (i) and (ii)) without Genevant’s prior written consent (which consent may be granted or withheld in Genevant’s sole discretion);
(b) except in the case of a Sublicense by Gritstone to an Affiliate, each Sublicense and sub-Sublicense shall be (x) in writing and on terms consistent with, and subject to, the terms that expressly apply to Sublicensees under this Agreement and (y) granted (i) to a Permitted Contractor or (ii) contemporaneously and in conjunction with a grant of a license under Intellectual Property Controlled by Gritstone or any of its Affiliates (other than pursuant to this Agreement) to Research, Develop, Manufacture or Commercialize [***];
(c) upon termination of this Agreement, any Sublicense shall convert into a direct license from Genevant under the terms of this Agreement; provided that the scope of the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense licensed under such direct license will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 scope of the applicable Sublicense; and further provided that the applicable Sublicensee (if and when effectivei) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with not then in breach of the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each applicable sublicense agreement, the Sublicensee must (ii) agrees in writing to be required bound to comply with Genevant as a licensee under the terms and conditions of this Agreement (subject to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsnoted in this clause (c), e.g. as applicable), and (iii) agrees in a more limited territory, field of usewriting that in no event shall Genevant assume any obligations or liability, or term.
(c) The official language be under any obligation or requirement of any sublicense agreement shall be English.performance that extends beyond Genevant’s obligations and liabilities under this Agreement;
(d) Within […***…] after entering into except in the case of a sublicenseSublicense by Xxxxxxxxx to an Affiliate, Licensor must receive Gritstone shall provide Genevant with a copy of the sublicense written executed Sublicense within [***] following its execution or in the English language for Licensorcase of a sub-Sublicense, within [***] following Xxxxxxxxx’s records and receipt thereof, with such reasonable redaction as Gritstone or its Sublicensee may make; provided that such redactions do not include provisions necessary to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure demonstrate compliance with the requirements of this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.;
(e) Licensee’s execution the grant of a sublicense agreement will such Sublicense shall not relieve Licensee of any Gritstone of its obligations under this Agreement. Licensee is , each of which shall continue without regard to such Sublicense; and
(f) as between Genevant and Gritstone, Xxxxxxxxx shall remain […***…] to Licensor be responsible for the compliance by such Sublicensee with any and all terms of Licensee’s duties and obligations contained in this Agreement and that expressly apply to such Sublicensees hereunder; provided that, for clarity, any act or omission of an Affiliate or by a Sublicensee that in connection with this Agreement that, if committed by Xxxxxxxxx would be a breach of this Agreement if performed or omitted by LicenseeAgreement, and Licensee will be deemed to be in shall constitute a breach of this Agreement as a result of such act or omissionby Gritstone.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Nonexclusive License and Development Agreement (Gritstone Bio, Inc.)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and (i) Other than with respect to subcontractor agreements entered into in accordance with Section 4.10(e), Serenity shall not sublicense the rights granted under Sections 2.4(a) or 2.4(b) without the prior written consent of Allergan. For clarification, an agreement with a contractor, contract research organization, contract manufacturer or other Third Party performing contracted services related to Development of a Product shall not be a Sublicensee thereof, provided such agreement is a fee-for-service arrangement and does not grant the Third Party the right to sell or promote such Product, and Serenity shall not enter into any such agreement except in accordance with Section 4.7 and 4.10(b), respectively.
(ii) Subject to Section 2.5, Serenity shall have the right to grant sublicenses, through multiple tiers of sublicenses, under the license in Sections 2.4(c) to Third Parties, ***. Each sublicense agreement shall include such provisions as are necessary to ensure Serenity’s ability to perform its obligations under this Agreement, including reporting and audit requirements and diligence obligations. Serenity shall be responsible for the performance of its Sublicensees hereunder. Serenity shall provide Allergan with a copy of the sublicense agreement for its Sublicensees within thirty (30) days after execution, which copy may be redacted to exclude financial and other sensitive terms (to the extent such terms are not relevant or applicable to Allergan) and shall be treated as Confidential Information of Serenity hereunder. Each sublicense granted by Serenity to any rights licensed to it hereunder shall terminate immediately upon the termination of the license from Allergan to Serenity with respect to such rights, unless (A) such Sublicensee is not in material breach of its obligations under its sublicense agreement, (B) if this Agreement was terminated for Serenity’s material breach, such Sublicensee cures such material breach by Serenity within thirty (30) days after such termination, and (C) such Sublicensee agrees in writing to be bound directly to Allergan under a license agreement substantially similar to this Agreement with respect to the rights sublicensed hereunder, substituting such Sublicensee for Serenity.
(iii) In the event Serenity would like to grant a sublicense for the Development or Commercialization of the Product for the PNE Indication, under the licenses in Sections 2.4(c), to an entity that is *** (the “PNE Development Entity”), Serenity shall notify Allergan and disclose the material terms and conditions of any such sublicense agreement prior to entering into such sublicense agreement. For clarity, any sublicense agreement between ***Certain confidential information contained in this document, marked with 3 asterisks, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Act of 1934, as amended. Serenity and the PNE Development Entity shall include without limitation terms and conditions reasonably acceptable to Allergan, including without limitation terms giving Allergan the same audit and inspection rights as those provided in Section 5.3, setting forth quality standards that are no less stringent than those determined by the JSC pursuant to Section 2.1.44.10(d), Licensee’s rights and obligating such PNE Development Entity to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with all applicable regulatory obligations and other Applicable Laws, to assign all Inventions to Allergan, to maintain the provisions confidentiality of this Confidential Information, to provide Information to Serenity for disclosure to Allergan, to provide to Allergan the right of first negotiation and refusal set forth in Section 2.4 (including Section 2.4.2).
2.4.2 The right 2.5, and to sublicense granted indemnify Allergan, each such term to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply consistent with the terms and conditions of contained in this Agreement Agreement. If Allergan consents in writing to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary Serenity’s grant of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightssublicense, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy such PNE Development Entity ***. For the avoidance of the sublicense written doubt, *** as set forth in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […For clarity, in the event of any ***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: License Agreement (Allergan Inc)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense 4.1 The Licensee will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 not grant sublicenses (including Section 2.4.2).
2.4.2 The right cross-licenses) of the Technology and any Improvements, without the prior written consent of the Licensor, not to sublicense granted to Licensee under this Agreement is be unreasonably withheld, subject to the following conditionsto:
(a) the Licensee may grant sublicenses […***…] only pursuant to providing the Licensor with a written fully executed copy of such sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution within 14 days of any such sublicenses.execution;
(b) In each sublicense agreement, the Sublicensee must be required agreeing to comply indemnify the Licensor, UPNG and IND Agency in accordance with the terms and conditions of indemnification provision set forth in Section 9.0 (except that each reference to this Agreement in Section 9.0 shall be amended to refer to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary sublicense agreement for the purposes of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee indemnity from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.the Sublicensee);
(c) The official language of any the sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of not interfering with the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any performance of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained ; and
(d) the sublicense agreement not materially conflicting with any terms in this Agreement Agreement.
4.2 Notwithstanding Section 4.1, the Licensor’s consent will not be required if:
(a) the proposed Sublicensee has a market capitalization, or in the case of a private company, shareholders equity, of $1 billion (Canadian funds) or more; or
(b) the Licensee has, prior to or at the time of granting such sublicense, conducted financing or other activities that have resulted in the receipt by the Licensee of at least $10 million (Canadian funds).
4.3 With respect to any sublicense agreement requiring the Licensor’s consent under Section 4.1, the Licensee will provide the Licensor with a fully executed copy of such sublicense agreement within 14 days of it being signed by the Licensee and Sublicensee.
4.4 Any sublicense granted by the Licensee will be personal to the Sublicensee, and will not be assigned or sublicensed without the prior written consent of the Licensor, not to be unreasonably withheld, provided however that such sublicensed rights may be sub-sublicensed by the Sublicensee without the prior consent of the Licensor if such sub-sublicense and the parties thereto comply with the provisions of Sections 4.1 and 4.3 (except that, for any act or omission of an Affiliate or Sublicensee that would be a breach the purposes of this Agreement if performed Section 4.4, each reference therein to a “sublicense” or omitted by Licensee, and Licensee will “Sublicensee” shall be deemed to be a reference to a “sub-sublicense” or a “sub-sublicensee”, respectively).
4.5 Prior to the execution of any sublicense agreement and sub-sublicense agreement under this Article 4.0, the Licensee shall demonstrate to the Licensor that such sublicense and sub-sublicense, as the case may be, complies with the requirements set out in breach Section 4.1(b) (except that, in respect of this Agreement as a result sublicense, the indemnity will be by the “sublicensee” and in respect of a sub-sublicense, the indemnity will be by the “sub-sublicensee”, respectively) by providing a copy of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder and sub-sublicense agreement to a Third Party shall survive termination of this Agreement in accordance with and subject Licensor prior to the terms of Section 6.6.2execution.
Appears in 1 contract
Samples: License Agreement (ESSA Pharma Inc.)
Sublicensing. 2.4.1 Upon written approval from Licensor, Licensee may enter into sublicensing agreements with Sublicensees, provided that Licensee has current exclusive rights thereto in the effectiveness of each Grant Date and the rights granted Territory being sublicensed pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited 2.1 and subject to the specific Licensed Indication covered by such license. The license following:
a) Any sublicense granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions a Sublicensee shall incorporate all of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsAgreement, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement which shall be English.
(d) Within […***…] after entering into binding upon each Sublicensee as if such Sublicensee were a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and party to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is shall collect and shall remain […***…] guarantee all payments due Licensor from Sublicensee(s). In each such sublicense, the Sublicensee will be prohibited from granting further sublicenses;
b) If Licensee becomes Insolvent, Licensor’s proportionate share of all payments then or thereafter due and owing to Licensee from its Sublicensees for the sublicense of the Patent Rights will, upon written notice from Licensor to any such Sublicensee, become payable directly to Licensor by Sublicensee for all the account of Licensee’s duties and obligations contained in this Agreement and for any act or omission ;
c) Licensee shall within thirty (30) days of: (a) execution, provide Licensor with a copy of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any each sublicense agreement granted by Licensee hereunder hereunder, and any amendments thereto or terminations thereof; and (b) receipt, summarize and deliver copies of all reports due to a Third Party Licensee from Sublicensee(s); and
d) If this Agreement is terminated for any reason, Licensor shall survive termination have the sole option to (a) terminate any or all sublicense(s) and all rights granted thereunder, or (b) require Licensee to immediately assign all of its right, title, and interest to all sublicense(s) to Licensor, including the right to receive all income from the sublicense(s). Licensee shall, prior to execution of each sublicense, make the intended Sublicensee(s) aware of this Agreement in accordance with and subject to the terms of Section 6.6.2contingency.
Appears in 1 contract
Samples: Exclusive License Agreement
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) 2.1 is sublicensable by Licensee to any Affiliates or Third PartiesParties [*]; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may only grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses. Any further sublicenses granted by any Sublicensees (to the extent permitted hereunder) must comply with the provisions of this Section 2.4 (including Section 2.4.2) to the same extent as if Licensee granted such sublicense directly.
(b) In each sublicense agreement, the Sublicensee must be required to comply with the all applicable terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing LicensesREGENXBIO Licensors. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensorsthe REGENXBIO Licensors’) ability to ensure compliance with this Agreement; provided that, if any either of Licensor’s licensors require the REGENXBIO Licensors requires a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Sublicensing. 2.4.1 Upon (a) Except as set out in item 5 of the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditionsDetails Schedule:
(ai) the Licensee may only grant sublicenses […***…] only pursuant sublicences of the Licence granted to a written sublicense agreement with it under this clause 3 where the Sublicensee. proposed sublicensee is approved by the Licensor must receive written notice as soon as practicable following execution in writing; and
(ii) the Licensor will not unreasonably withhold approval, but may withhold approval (or revoke approval) on reasonable grounds, including based on the risk, financial status or reputation of any such sublicensesthe sublicensee.
(b) In each sublicense agreementExcept where sublicence rights are expressly limited in item 5 of the Details Schedule and subject to the further requirements under this clause 3.3, the Sublicensee must be Licensor approves the sublicence of the Licensed IPR by the Licensee to:
(i) any sublicensees and for the purposes set out in the Commercialisation Business Plan; and
(ii) purchasers of Product, but only to the extent required to comply with enable those customers to receive the terms and conditions benefit of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or termProduct.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor Licensee must receive a copy ensure that all sublicences of the sublicense written in the English language for Licensor’s records and to share Licensed IPR are consistent with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is Without limitation, unless otherwise approved by the Licensor, the sublicence agreement must include provisions to the effect that:
(i) the sublicensee must observe terms similar to, consistent with and shall remain […***…] to Licensor for all of Licensee’s duties and obligations at least as onerous as those contained in this Agreement so far as they are capable of observance and performance by the sublicensee;
(ii) the sublicence will be personal to the sublicensee and will not be assignable, nor will the sublicensee have the right to sublicense;
(iii) the Licensee may terminate the sublicence without compensation or notice if the sublicensee does anything or omits to do anything which would, if done or omitted to be done by the Licensee, give the Licensor the right to terminate this Agreement;
(iv) such sublicence is capable of being terminated at the Licensor's sole discretion at the same time as the termination of (or exercise by the Licensor of its rights under clause 15.5 in respect of) this Agreement or any licences granted under it; and
(v) the Licensor has audit rights in respect of the sublicensee equivalent to the Licensor’s rights to audit the Licensee under clause 6 of this Agreement.
(d) The Licensee must notify the Licensor promptly of any sublicence entered into and provide the Licensor with a copy of the sublicence terms (excluding financial payment terms and any personal information). In respect of sublicences to purchasers of Products, the Licensee is only required to notify the Licensor of its intention to use a particular form of sublicence.
(e) The acts or omissions of any sublicensee are considered for any act or omission of an Affiliate or Sublicensee that would be a breach the purposes of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach the acts or omissions of this Agreement as a result of such act or omissionthe Licensee.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Licensing Agreement
Sublicensing. 2.4.1 Upon 2.2.1 Vivelix will have the effectiveness right to grant sublicenses under the Licensed Patents through multiple tiers of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Partiessublicenses; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject to the following conditionsthat:
(a) Licensee may Vivelix will not have the right to grant any sublicenses under the Licensed Technology with respect to IMO-9200 in the United States until the date of Completion of the first Phase I Trial for IMO-9200 […***…] only pursuant ], except as may be necessary to utilize the services of a written sublicense agreement Third Party in accordance with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.Section 2.2.6; and
(b) any such sublicense shall include additional intellectual property rights controlled by Vivelix that are not licensed to it by Idera under this Agreement. For clarity, such additional intellectual property rights include data, results, or other know-how and need not be patent rights.
2.2.2 Vivelix will remain responsible for the performance of Sublicensees under this Agreement, including for all payments due hereunder, and any act or omission on the part of a Sublicensee that would constitute a breach of this Agreement if such act or omission had been on the part of Vivelix will be deemed a breach of this Agreement by Vivelix. Idera agrees and acknowledges that in the event (a) of an act or omission by a Sublicensee that has given rise to a right of Idera to terminate this Agreement in accordance with Section 7.3 and (b) Idera has provided notice of termination of this Agreement with respect to the field and country that are the subject of the applicable sublicense in accordance with Section 7.3, such termination shall not be effective if Vivelix has cured the applicable material breach or terminated all sublicenses granted to such Sublicensee hereunder prior to one hundred eighty (180) days after the date on which Vivelix receives such notice from Idera. Vivelix will provide Idera with notice of each sublicense promptly, but in any case within ten (10) business days, after execution of such sublicense agreement. In each addition, Vivelix will provide to Idera with such notice a copy of any such sublicense agreement, the Sublicensee must provided that Vivelix may redact confidential technical and financial terms from such copy of such sublicense agreement.
2.2.3 Each sublicense granted by Vivelix pursuant to Section 2.2.1 will be required subject and subordinate to comply with the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary of such will contain terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. consistent with those in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is Without limitation, each sublicense granted by Vivelix pursuant to Section 2.2.1 must contain indemnification and shall remain […***…] to Licensor for all insurance provisions in favor of Licensee’s duties and obligations contained Idera that are no less protective of Idera as such provisions in this Agreement and a provision stating that in the event of a Patent Challenge by the Sublicensee then Vivelix shall be entitled to terminate the applicable sublicense. Idera agrees and acknowledges that in the event of a Patent Challenge by a Sublicensee, if Vivelix has terminated all sublicenses granted to such Sublicensee hereunder within ninety (90) days after Vivelix has knowledge of such Patent Challenge, Idera shall not terminate this Agreement on account of such Patent Challenge by such Sublicensee.
2.2.4 Unless a sublicense provides that it shall terminate upon termination of this Agreement, if this Agreement terminates for any act reason other than termination by Vivelix pursuant to Section 7.2, then at the option of any Sublicensee not in breach of the applicable sublicense (or omission of an Affiliate or Sublicensee that would be a breach any provision of this Agreement if performed or omitted by Licenseeapplicable to such Sublicensee) such Sublicensee shall, from the effective date of such termination, automatically become a direct licensee of Idera under, and Licensee will be deemed subject to be in breach the terms and conditions of, this Agreement, subject only to modifications with respect to territory, field and exclusivity consistent with the scope of the applicable sublicense and so as to accommodate all such Sublicensees; provided, however, that such Sublicensee cures all breaches by Vivelix of this Agreement; and provided further, however that Idera (a) shall not have under any such direct license any obligations that are greater than or inconsistent with the obligations of Idera under this Agreement as a result or any fewer rights than it has under this Agreement, and (b) Idera shall have no liability for any obligations arising prior to effective date of such act direct license or omissionfor any obligations of Vivelix whenever arising and Idera shall be released from any and all liability relating to such obligations.
2.4.3 Any 2.2.5 Such Sublicensees shall have the right to grant further sublicenses to Third Parties of same or lesser scope as its sublicense agreement granted by Licensee hereunder to a Third Party from Vivelix under the licenses contained in Section 2.1, provided that such further Sublicenses shall survive termination of this Agreement be in accordance with and subject to all of the terms and conditions of this Section 2.2 (i.e., such Sublicensee shall be subject to this Section 2.2 in the same manner and to the same extent as Vivelix). For clarity, any person or entity to whom a Sublicensee grants a sublicense as permitted by the terms of Section 6.6.2this Agreement shall be deemed to be a Sublicensee for purposes of this Agreement.
Appears in 1 contract
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant 6.3.1 Subject to Section 2.1.46.3.4, Licensee’s rights Xxxxxxx may xxxxx to sublicense will be limited to one or more Third Parties sublicenses under the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third PartiesXxxxxxx License; provided that any Xxxxxxx shall execute a written agreement with each such sublicense must sublicensee and shall comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to following: each such sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with shall be subject and subordinate to, and consistent with, the Sublicensee. Licensor must receive written notice as soon as practicable following execution terms and conditions of any such sublicenses.
this Agreement, (b) In shall not in any way diminish, reduce or eliminate any of Xxxxxxx’ obligations under this Agreement, (c) shall require each sublicense agreement, the Sublicensee must be required such sublicensee to comply with all applicable terms of this Agreement, including, where such sublicense includes sublicensed rights to make or have made any Sensor Disposables, to keep books and records relevant to such Sensor Disposables, and to permit Xxxxxxx to audit (either directly or through an independent auditor) such books and records, and (d) shall provide that any such sublicensee shall not further sublicense. Xxxxxxx shall provide DexCom with a copy of each such sublicense agreement within thirty (30) days after the execution thereof. Such copy may be redacted to exclude confidential information (other than such financial and other information that is necessary for assessing Xxxxxxx’ compliance with the terms and conditions of this Agreement). In the event of any uncured material breach by any sublicensee under a sublicense agreement that would constitute a breach of Xxxxxxx’ obligations under this Agreement, upon notice thereof, Xxxxxxx will promptly inform DexCom in writing and shall take such action which in Xxxxxxx’ reasonable business judgment will address such default; provided, however, any such uncured material breach by such sublicensee of an obligation that would constitute a breach of Xxxxxxx’ obligations under this Agreement shall be deemed an uncured material breach by Xxxxxxx hereunder unless Xxxxxxx cures such material breach within the time provided under Section 11.3 hereof.
6.3.2 Except as provided in Section 6.3.4, if and to the extent that a sublicense granted by Xxxxxxx includes any right to sell and make or have made any Sensor Disposables, all gross revenue derived by such sublicensee or its Affiliates from sales of Sensor Disposables to any Person (other than Xxxxxxx or its Affiliates, for resale, or such sublicensee’s Affiliates for resale), less the deductions described in clauses (a) – (e) of Section 1.58 (Net Sales), to the extent the same are credited or deducted from sales, shall be deemed to be part of the “Net Sales” under this Agreement upon which Royalties will accrue hereunder and be payable by Xxxxxxx to DexCom. Otherwise, Net Sales as defined hereunder shall not include sales of Xxxxxxx sublicensees and, as a result, Royalties shall not arise or accrue on sales of Xxxxxxx sublicensees (it being understood, for clarity, that Revenue Sharing will not in any event be applicable to sales by sublicensees where the sublicensee, rather than DexCom, produces the Sensor Disposable).
6.3.3 In addition, except as provided in Section 6.3.4, Xxxxxxx shall pay DexCom an amount equal to [*****] of any fees (including without limitation upfront and milestone payments and royalties, other than sales-based royalties on the Net Sales of the sublicensee on Sensor Disposables upon which Net Sales Xxxxxxx will pay Royalties as described under Section 6.3.2) Xxxxxxx actually receives from its sublicensees solely in consideration of the grant of the sublicense of the rights under the Xxxxxxx License or for the grant of any license under the Software Copyrights (“Xxxxxxx Sublicense Fees”). For the avoidance of doubt, Xxxxxxx Sublicense Fees shall not include any amounts received by Xxxxxxx as payments or reimbursements for any asset, right, activities or undertakings other than the sublicense grant of the rights under the Xxxxxxx License, including but not limited to payments for research, development, manufacturing, sale or promotion of products or for services. Any Xxxxxxx Sublicense Fees constituting non-monetary consideration shall be valued at their fair market value upon receipt by Xxxxxxx and Xxxxxxx shall pay DexCom its percentage of such Xxxxxxx Sublicensing Fee in cash in accordance with this Section 6.3.3.
6.3.4 If any sublicense is granted by Xxxxxxx under the Xxxxxxx License to a Third Party primarily in return for a fully paid-up and royalty-free right to practice such Third Party’s Technology or other intellectual property necessary for Xxxxxxx to make, use, sell, offer to sell or import any Licensed Products or Sensor Disposables in the Territory, then so long as Xxxxxxx complies with clauses (a), (b) and (c) below, and notwithstanding Sections 6.3.2 and 6.3.3, no sublicense fees, royalty or other consideration shall be owing or due to DexCom with respect to any sublicense granted in accordance with this Section 6.3.4: (a) Xxxxxxx shall, to the extent practicable and subject to any confidentiality obligations Xxxxxxx may have to Third Parties, prior to granting any such sublicense (unless such sublicense is granted following a Change of Control of DexCom), notify DexCom of Xxxxxxx’ intention to make any such grant, and shall consult in good faith with DexCom with respect thereto over a period that is reasonable in the circumstances (it being understood that DexCom will not thereby be afforded a consent, approval or veto right [*****] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. Confidential treatment has been requested with respect to the omitted portions. over any such sublicense grant by Xxxxxxx); (b) Xxxxxxx hereby agrees that DexCom shall have no liability or responsibility in connection with its indemnification obligations under Article 12 to the extent arising from or caused by such Third Party Technology or other Third Party intellectual property licensed by Xxxxxxx in accordance with this Section 6.3.4; and (c) Xxxxxxx shall secure for DexCom from such Third Party the same such rights to practice or otherwise exploit, the Third Party Technology within the Xxxxxxx Field, in the event the DexCom License is extended to the Xxxxxxx Field pursuant to Sections 6.2.2, 6.1.3 or 11.7.
6.3.5 DexCom may grant to one or more Third Parties sublicenses under the DexCom License in connection with the grant of rights to or under any product, service, or Technology substantially developed by or for DexCom or its Affiliates. For clarity, DexCom shall have no right to grant any “naked” sublicenses of its rights under the DexCom License, where “naked sublicenses” are understood to be sublicenses of Xxxxxxx Technology or Software Copyrights that are neither (a) granted in conjunction with the grant to the same extent as Licensee has agreed Person of other Technology rights of or Controlled by DexCom nor (b) granted for use with defined or specified products or services developed by DexCom and must acknowledge that Licensor is an express third party beneficiary of their modifications and successor products and services.
6.3.6 DexCom shall execute a written agreement with each such sublicensee and shall comply with the following: each such sublicense (a) shall be subject and subordinate to, and consistent with, the terms and conditions of this Agreement, (b) shall not in any way diminish, reduce or eliminate any of DexCom’s obligations under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsthis Agreement, e.g. in a more limited territory, field of use, or term.
(c) The official language shall require each such sublicensee to comply with all applicable terms of any sublicense agreement shall be English.
this Agreement, and (d) Within […***…] after entering into a shall provide that any such sublicensee shall not further sublicense, Licensor must receive . DexCom shall provide Xxxxxxx with a copy of each such sublicense agreement within thirty (30) days after the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licensesexecution thereof. The Such copy of the sublicense may be redacted to exclude confidential information information. In the event of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if uncured material breach by any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of sublicensee under a sublicense agreement will not relieve Licensee that would constitute a breach of any of its DexCom’s obligations under this Agreement. Licensee is , upon notice thereof, Xxxxxxx will promptly inform DexCom in writing and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained take such action which in this Agreement and for Xxxxxxx’ reasonable business judgment will address such default; provided, however, any act or omission such uncured material breach by such sublicensee of an Affiliate or Sublicensee obligation that would be constitute a breach of DexCom’s obligations under this Agreement if performed or omitted by Licensee, and Licensee will shall be deemed to be in an uncured material breach of this Agreement as a result of by DexCom hereunder unless DexCom cures such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to material breach within the terms of time provided under Section 6.6.2.11.3 hereof
Appears in 1 contract
Samples: Collaboration Agreement (Dexcom Inc)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense 4.1 The Licensee will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 not grant sublicenses (including Section 2.4.2).
2.4.2 The right cross-licenses) of the Technology and any Improvements, without the prior written consent of the Licensor, not to sublicense granted to Licensee under this Agreement is be unreasonably withheld, subject to the following conditionsto:
(a) the Licensee may grant sublicenses […***…] only pursuant to providing the Licensor with a written fully executed copy of such sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution within 14 days of any such sublicenses.execution;
(b) In each sublicense agreement, the Sublicensee must be required agreeing to comply indemnify the Licensor, UPNG and IND Agency in accordance with the terms and conditions of indemnification provision set forth in Section 9.0 (except that each reference to this Agreement in Section 9.0 shall be amended to refer to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary sublicense agreement for the purposes of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee indemnity from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.the Sublicensee);
(c) The official language of any the sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive a copy of not interfering with the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall not be redacted to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of any performance of its obligations under this Agreement. Licensee is and shall remain […***…] to Licensor for all of Licensee’s duties and obligations contained ; and
(d) the sublicense agreement not materially conflicting with any terms in this Agreement Agreement.
4.2 Notwithstanding Section 4.1, the Licensor’s consent will not be required if:
(a) the proposed Sublicensee has a market capitalization, or in the case of a private company, shareholders equity, of $1 billion (Canadian funds) or more; or
(b) the Licensee has, prior to or at the time of granting such sublicense, conducted financing or other activities that have resulted in the receipt by the Licensee of at least $10 million (Canadian funds).
4.3 With respect to any sublicense agreement requiring the Licensor’s consent under Section 4.1, the Licensee will provide the Licensor with a fully executed copy of such sublicense agreement within 14 days of it being signed by the Licensee and Sublicensee.
4.4 Any sublicense granted by the Licensee will be personal to the Sublicensee, and will not be assigned or sublicensed without the prior written consent of the Licensor, not to be unreasonably withheld, provided however that such sublicensed rights may be sub-sublicensed by the Sublicensee without the prior consent of the Licensor if such sub-sublicense and the parties thereto comply with the provisions of Sections 4.1 and 4.3 (except that, for any act or omission of an Affiliate or Sublicensee that would be a breach the purposes of this Agreement if performed Section 4.4, each reference therein to a “sublicense” or omitted by Licensee, and Licensee will “Sublicensee” shall be deemed to be a reference to a “sub-sublicense” or a “sub-sublicensee”, respectively).
4.5 Prior to the execution of any sublicense agreement and sub-sublicense agreement under this Article 4.0, the Licensee shall demonstrate to the Licensor that such sublicense and sub-sublicense, as the case may be, complies with the requirements set out in
Section 4.1 (b) (except that, in breach respect of this Agreement as a result sublicense, the indemnity will be by the “sublicensee” and in respect of a sub-sublicense, the indemnity will be by the “sub-sublicensee”, respectively) by providing a copy of such act or omission.
2.4.3 Any sublicense agreement granted by Licensee hereunder and sub-sublicense agreement to a Third Party shall survive termination of this Agreement in accordance with and subject Licensor prior to the terms of Section 6.6.2execution.
Appears in 1 contract
Samples: License Agreement (ESSA Pharma Inc.)
Sublicensing. 2.4.1 Upon the effectiveness Wyeth may grant to one or more Third Parties sublicenses of each Grant Date and the rights granted pursuant to it under Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to 2.1 hereof at any Affiliates or Third Partiestime; provided that any Wyeth shall execute a written agreement with each such sublicense must sublicensee and shall comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to following: Each such sublicense granted to Licensee under this Agreement is subject to the following conditions:
(a) Licensee may grant sublicenses […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
(b) In each sublicense agreementshall be subject and subordinate to, the Sublicensee must be required to comply with and consistent with, the terms and conditions of this Agreement to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary Agreement, (b) shall not in any way diminish, reduce or eliminate any of such terms and conditions Wyeth’s obligations under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rightsthis Agreement, e.g. in a more limited territory, field of use, or term.
(c) The official language shall require each such sublicensee to comply with all applicable terms of any sublicense agreement shall be English.
this Agreement, including to keep books and records, and permit Wyeth to audit (either directly or through an independent auditor) such books and records, and (d) Within […***…] after entering into a sublicense, Licensor must receive shall provide that any such sublicensee shall not further sublicense except on terms consistent with this Section 2.4. Wyeth shall provide Trubion with a copy of each such sublicense agreement within thirty (30) days after the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licensesexecution thereof. The Such copy of the sublicense may be redacted to exclude confidential confidential, non-Licensed Product-related information and financial information (other than such financial information that is necessary for assessing the obligations to Trubion under this Agreement). Upon Trubion’s request and at Trubion’s expense, Wyeth shall exercise its right to conduct an audit of the applicable Sublicensee, but such copy shall not be redacted a sublicensee’s books and records pertaining to the extent sale of a Licensed Product under any such sublicense agreement at the next time that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance conducting such an audit is permissible under such sublicense agreement. Wyeth shall provide Trubion with this Agreement; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicensereport of the findings made in any such audit. If such audit reveals that such sublicensee has understated its Net Sales by ten percent (10%) or more, Licensee Wyeth shall provide be responsible for the costs of the audit. Wyeth shall remain responsible for its obligations hereunder and for the performance of its sublicensees (including, without limitation, making all payments due Trubion by reason of any Net Sales of Licensed Products), and shall ensure that any such complete, unredacted copy.
(e) Licensee’s execution sublicensees comply with all relevant provisions of this Agreement. In the event of any uncured material breach by any sublicensee under a sublicense agreement will not relieve Licensee that would constitute a breach of any of its Wyeth’s obligations under this Agreement. Licensee is , Wyeth will promptly inform Trubion in writing and shall remain […***…] to Licensor for all of Licenseetake such action which in Wyeth’s duties and obligations contained in this Agreement and for reasonable business judgment will address such default; provided, however, any act or omission such uncured material breach by such sublicensee of an Affiliate or Sublicensee obligation that would be constitute a breach of Wyeth’s obligations under this Agreement if performed or omitted by Licensee, and Licensee will shall be deemed to be in an uncured material breach of this Agreement as a result of Wyeth hereunder unless Wyeth cures such act or omissionmaterial breach within the time provided under Section 9.5 hereof.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Collaboration and License Agreement (Aptevo Therapeutics Inc.)
Sublicensing. 2.4.1 Upon the effectiveness Vertex may grant sublicenses through multiple tiers to one or more Sublicensees of each Grant Date any and the all rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to Vertex by CRISPR under the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third PartiesExclusive License; provided that Vertex, its Affiliates and its Sublicensees shall only be permitted to grant a Sublicense to conduct any Commercialization activities with respect to a Product [***] with CRISPR’s prior written consent, such sublicense must comply consent not to be unreasonably withheld, conditioned or delayed and provided, further, that no such consent will be needed with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right respect to sublicense granted to Licensee under this Agreement is subject to the following conditions:
any Sublicense (a) Licensee may grant sublicenses granted to a Third Party to conduct Commercialization activities with respect to a Product in […***…] only pursuant to a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of (and not any such sublicenses.
other [***]), (b) In each sublicense agreementgranted to a Distributor or other Third Party to conduct activities on Vertex’s or its Affiliates’ or any Sublicensee’s behalf or (c) granted to a Third Party to Manufacture Products on Vertex’s or its Affiliates’ or any Sublicensee’s behalf. Each such Sublicense will be subject and subordinate to, the Sublicensee must be required to comply with and consistent with, the terms and conditions of this Agreement and will require such Sublicensee to comply with all applicable terms of this Agreement and all Third Party Obligations to the same extent as Licensee has agreed and must acknowledge that Licensor is an express third party beneficiary the provisions of such terms obligations or agreements are specifically disclosed to Vertex in writing (or via electronic data room). Vertex, and conditions under such sublicense agreement; provided each Sublicensee that nothing grants a further Sublicense, shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any sublicense agreement shall be English.
(d) Within […***…] after entering into a sublicense, Licensor must receive promptly provide CRISPR with a copy of the each fully executed Sublicense agreement that includes any sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The granted hereunder (which copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall remove provisions which are not be redacted necessary to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure monitor compliance with this AgreementSection 4.1.2); provided that, if any of Licensor’s licensors require Vertex and its Sublicensees shall not be required to provide CRISPR with a complete, unredacted copy of any sublicense that is granted on a non-exclusive basis to a Subcontractor solely to enable such Subcontractor to perform Research, Development, Manufacturing or Commercialization activities on behalf of and solely for the sublicensebenefit of Vertex, Licensee shall provide such complete, unredacted copy.
(e) Licensee’s execution of a sublicense agreement will not relieve Licensee of its Affiliates or any of its obligations under Sublicensee pursuant to this Agreement. Licensee is and Vertex shall remain […***…] primarily liable to Licensor CRISPR for the performance of all of LicenseeVertex’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or Sublicensee that would be a breach of this Agreement if performed or omitted by Licenseeunder, and Licensee will be deemed to be in breach of Vertex’s compliance with all provisions of, this Agreement as a result of such act or omissionAgreement.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
Samples: Strategic Collaboration and License Agreement (CRISPR Therapeutics AG)
Sublicensing. 2.4.1 Upon the effectiveness of each Grant Date and the Hammock may sublicense rights granted pursuant to Section 2.1.4, Licensee’s rights to sublicense will be limited to the specific Licensed Indication covered by such license. The license granted pursuant to Section 2.1.4 (if and when effective) is sublicensable by Licensee to any Affiliates or Third Parties; provided that any such sublicense must comply with the provisions of this Section 2.4 (including Section 2.4.2).
2.4.2 The right to sublicense granted to Licensee under this Agreement is subject (including in multiple tiers of sublicenses) pursuant to the following conditionswritten sublicense agreements, provided that:
(i) Hammock, within ten (10) days of the granting of each sublicense, notifying MilanaPharm of such grant and the name and address of each such Sublicensee;
(ii) The sublicense requiring the payment of royalty rates in an amount, when taken as a whole together with all other amounts to be paid by the applicable Sublicensee under such sublicense, that are at least reasonably sufficient to cover the amounts required to be paid to MilanaPharm under this Agreement for such Sublicensee’s applicable sales;
(iii) the sublicense agreement (a) Licensee may grant sublicenses […***…] only pursuant providing that the rights and/or obligations to MilanaPharm under Sections 4.5, 4.6, 5, 9.1, and 11 of this Agreement are binding upon the Sublicensee as if it were a written sublicense agreement with the Sublicensee. Licensor must receive written notice as soon as practicable following execution of any such sublicenses.
party to this Agreement, and (b) In each including copies of such Sections or Articles;
(iv) the sublicense agreement, agreement including provisions of the same scope as provided in Sections 12 and 13;
(v) the sublicense agreement not containing any provision that could reasonably be deemed to cause any harm to MilanaPharm’s rights hereunder or thereunder;
(vi) the sublicense agreement may permit the Sublicensee must be required to comply grant further sublicenses, provided that such further sublicenses are (a) in writing, (b) consistent with the terms and conditions requirements of this Agreement to the same extent as Licensee has agreed Agreement, and must acknowledge that Licensor is an express third party beneficiary of such terms and conditions under such sublicense agreement; provided that nothing shall prevent Licensee from granting sublicenses of more limited scope than Licensee’s rights, e.g. in a more limited territory, field of use, or term.
(c) The official language of any include all provisions that Hammock is required to include in a sublicense;
(vii) the sublicense agreement shall be English.disclaiming all representations, warranties, indemnities and liability on the part of Licensors;
(dviii) Within […***…] after entering into a sublicense, Licensor must receive a copy of the sublicense written in the English language for Licensor’s records and to share with Licensor’s licensors under the Existing Licenses. The copy of the sublicense may be redacted to exclude confidential information of the applicable Sublicensee, but such copy shall agreement not be redacted granting any rights to the extent that it impairs Licensor’s (or any of its licensors’) ability to ensure compliance Licensed Intellectual Property which are inconsistent with this Agreementthe rights granted to, and the obligations of, Hammock hereunder; provided that, if any of Licensor’s licensors require a complete, unredacted copy of the sublicense, Licensee shall provide such complete, unredacted copy.and
(eix) Licensee’s execution of a sublicense agreement will not relieve Licensee of any of its obligations under this Agreement. Licensee is and Hammock shall remain […***…] to Licensor responsible for all of Licensee’s duties and obligations contained in this Agreement and for any act or omission of an Affiliate or the performance by the Sublicensee that would be a breach of this Agreement if performed or omitted by Licensee, and Licensee will be deemed to be in breach of this Agreement as a result of such act or omissionobligations.
2.4.3 Any sublicense agreement granted by Licensee hereunder to a Third Party shall survive termination of this Agreement in accordance with and subject to the terms of Section 6.6.2.
Appears in 1 contract
