Effect of Termination or Expiration. 13.6.1 Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS all Fees or other amounts due to NOVARTIS as of the effective date of termination or expiration within [***] days following the effective date of termination or expiration. 13.6.2 Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory. 13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, any and all Fees owed to NOVARTIS. 13.6.4 Upon termination of this Agreement: (a) LICENSEE hereby grants to NOVARTIS a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4 (a) only if NOVARTIS agrees in writing to reimburse LICENSEE for all
Appears in 2 contracts
Sources: License Agreement (Magenta Therapeutics, Inc.), License Agreement (Magenta Therapeutics, Inc.)
Effect of Termination or Expiration. 13.6.1 Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS all Fees or other amounts due to NOVARTIS as of the effective date of termination or expiration within [***] days ** following the such effective date of termination or expiration.
13.6.2 Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (iand subject to Section 13.6.4(d) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) below, LICENSEE shall have the right to sell its remaining inventory of Products each Product following the termination of this Agreement so long as Agreement; provided that (a) LICENSEE has fully paid, and continues to fully pay when due, any and all Fees owed pursuant to NOVARTISthe terms hereof; (b) LICENSEE is not in material breach of this Agreement; and (c) ***** occurred prior to the effective date of termination.
13.6.3 For the avoidance of doubt, upon termination of this Agreement, all licenses granted by PFIZER to LICENSEE and, at PFIZER’s option, all sublicenses granted by LICENSEE in connection with this Agreement shall terminate.
13.6.4 Upon termination of this AgreementAgreement by PFIZER:
(a) LICENSEE shall grant, and hereby grants grants, to NOVARTIS a non-PFIZER an exclusive, fully paid-up, royalty-free, worldwide, transferable, perpetual and irrevocable license, with the right to sublicense, to Use any and all the Developed IP to the extent necessary or useful to (i) Develop, Commercialize or Use the Products or (ii) copy, distribute, make derivative works and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used otherwise exploit the Developed IP in connection with Developing, Commercializing and Using the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”)Products, solely for such purposes. For clarity, LICENSEE retains all rights to the Developed IP in connection with products other than the Products.
(b) LICENSEE shall, at PFIZER’s request, undertake promptly and completely to (i) return to PFIZER or, at PFIZER’s option, to any of its Affiliates or a Third Party designated in writing by PFIZER (“Designated Affiliate/Third Party”) all Documentation, Items, Regulatory Filings and other regulatory-related documentation and materials provided by PFIZER to LICENSEE in connection with the Transfer Activities described in Schedule D and subsection (ii) of this Section, and (ii) perform the activities described in Schedule D (including the transfer of all Regulatory Filings, materials and documents) that PFIZER performed for LICENSEE for PFIZER or, at PFIZER’s option, the Designated Affiliate/Third Party; provided that LICENSEE shall perform such transfer and activities at LICENSEE’S expense and with respect to the Products and the Compounds as such exist as of the effective date of termination. LICENSEE shall transfer all materials, documents and Regulatory Filings pursuant to the foregoing in their current state as of the effective date of termination, reflecting Development and Commercialization efforts (including Regulatory Approvals and Trial Master Files, regardless of whether the clinical studies are completed) made by LICENSEE to the Compound and/or Product as of such date.
(c) To the extent that transfer of all Regulatory Filings and Regulatory Approvals held by LICENSEE with respect to the Products is not permitted by the applicable Regulatory Authority, LICENSEE shall permit PFIZER and, at PFIZER’s option, its Designated Affiliate/Third Party, to (and shall not itself, or permit any Third Parties to) cross-reference and rely upon any Regulatory Approvals and Regulatory Filings filed by LICENSEE with respect to the Products.
(d) LICENSEE shall, if requested by PFIZER, grant, and hereby grants, to PFIZER a fully paid-up, royalty-free, worldwide, transferable, sublicensable, perpetual and irrevocable exclusive license to use the Trademarks identifying Product(s) for the purpose of manufacturing, marketing, distributing and selling the Products.
(e) Upon PFIZER’s request, LICENSEE shall continue all ongoing activities that are reasonably necessary to continue Development and Commercialization of the Products provided howeverfor a mutually agreed upon migration period after termination of this Agreement, which period shall not be less than ***** unless otherwise agreed to in writing by the Parties (“Migration Period”), and PFIZER shall reimburse LICENSEE for LICENSEE’s reasonable out-of-pocket costs that are directly attributable to such activities and LICENSEE shall provide PFIZER with all gross proceeds that arc received (if any) in connection with the Products (including any and all sales thereof). During the Migration Period, LICENSEE shall provide such Reversion IP is in-licensed from a Third Party and subject to payment knowledge transfer and other applicable obligations training to such PFIZER or, at PFIZER’s option, its Designated Affiliate/Third Party, as reasonably necessary for PFIZER or the Designated Affiliate/Third Party to continue research and development and Commercialization activities for the Product. In connection with such transfer and notwithstanding anything to the contrary herein, LICENSEE shall, at PFIZER’s option: (i) transfer to PFIZER or the Designated Affiliate/Third Party all Product *****; (ii) transfer to PFIZER or the Designated Affiliate/Third Party all LICENSEE Inventory owned by LICENSEE at *****; and (iii) assign to PFIZER or the Designated Affiliate/Third Party any agreements with Third Parties with respect to the Development or Commercialization of the Products. During the Migration Period, LICENSEE also shall transfer, or have transferred, all files related to filing, prosecuting and maintaining the Patent Rights to patent counsel or foreign associates designated by PFIZER, and provide such other assistance to PFIZER or, at PFIZER’s option, the Designated Affiliate/Third Party, to permit PFIZER or such Designated Affiliate/Third Party (as applicable) to control, or delegate control of, the filing, prosecuting and maintaining of the Patent Rights. LICENSEE shall promptly disclose such obligations be obligated to NOVARTIS in writing continue filing, prosecuting and such Reversion IP shall be subject maintaining all Patent Rights until the foregoing transfer of files related to filing, prosecuting and maintaining the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allPatent Rights is complete.
Appears in 2 contracts
Sources: License Agreement (Arog Pharmaceuticals, Inc.), License Agreement (Arog Pharmaceuticals, Inc.)
Effect of Termination or Expiration. 13.6.1 12.6.1 Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS PFIZER all Fees or other amounts due to NOVARTIS PFIZER as of the effective date of termination or expiration within [***] thirty (30) days following the effective date of termination or expiration. * Information redacted pursuant to a confidential treatment request by Gemphire Therapeutics Inc. under 5 U.S.C. §552(b)(4) and Rule 406 under the Securities Act of 1933 and submitted separately with the Securities and Exchange Commission.
13.6.2 12.6.2 Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products Product following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, paid any and all Royalties, Milestone Payments and Permitted sublicense Fees owed to NOVARTISPFIZER, and LICENSEE otherwise is not in material breach of this Agreement.
13.6.4 Upon 12.6.3 Subject to this Section 12, upon termination of this Agreement, all licenses granted by PFIZER to LICENSEE shall terminate. For clarity, termination of the licenses granted by PFIZER to LICENSEE shall terminate all Permitted sublicenses granted by LICENSEE hereunder.
12.6.4 With the exception of termination of this Agreement by LICENSEE pursuant to Section 12.2, upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS PFIZER a non-exclusive, fully paid-up, royalty-free, worldwide, transferable, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in arise from the Development, manufacture Development or Commercialization of the Product, including without limitation, any and all Developed IP for Use of the Product.
(b) To the extent permitted by applicable Regulatory Authorities, LICENSEE shall: (i) transfer to PFIZER all Regulatory Filings and Regulatory Approvals held by LICENSEE with respect to the Product, and (ii) to the extent subsection (i) is not permitted by the applicable Regulatory Authority, permit PFIZER to cross-reference and rely upon any Regulatory Approvals and Regulatory Filings filed by LICENSEE with respect to the Product.
(c) LICENSEE hereby grants to PFIZER a fully paid-up, royalty-free, worldwide, transferable, sub licensable, perpetual and irrevocable license to use the Trademarks identifying a Product as for the Product exists at purpose of manufacturing, marketing, distributing and selling the time of termination (“collectivelyProduct. As used herein, “Reversion IP”)Trademarks” means all registered and unregistered trademarks, solely for the Development service marks, trade dress, trade names, logos, insignias, domain names, symbols, designs, and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allcombinations thereof.
Appears in 2 contracts
Sources: License Agreement (Gemphire Therapeutics Inc.), License Agreement (Gemphire Therapeutics Inc.)
Effect of Termination or Expiration. 13.6.1 9.3.1 Upon termination or expiration (not expiration) of this Agreement, LICENSEE shall pay to NOVARTIS all Fees or other amounts Agreement by Licensor due to NOVARTIS Licensee’s suffering of an Insolvency Event under Section 9.2:
9.3.1.1 Each Party shall promptly return to the other Party all relevant records and materials in its possession or control containing or comprising the other Party’s Confidential Information and to which the Party does not retain rights hereunder.
9.3.1.2 All rights in any and all Licensed Products existing as of the effective date of such termination or expiration within [***] days following the effective date of termination or expiration(each a “Termination Product”) shall revert to Licensor.
13.6.2 Upon expiration 9.3.1.3 Licensee and its Affiliates shall discontinue making any representation regarding its status as a licensee of this Agreement pursuant Licensor for all Licensed Products. Licensee and its Affiliates shall cease and shall have no obligation of conducting any activities with respect to Section 13.1 (but not upon termination the Development, Manufacture, or Commercialization of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territoryrelevant Termination Product.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE 9.3.1.4 Licensor shall have the right to sell develop and commercialize the Termination Products itself or with one or more Third Parties, and shall have the right, without obligation to Licensee, to take any such actions in connection with such activities as Licensor (or its remaining inventory designee), at its discretion, deems appropriate.
9.3.1.5 Licensee will provide to Licensor copies of all material reports and data, including clinical and non-clinical data and reports, obtained or generated by or on behalf of Licensee or its Affiliates pursuant to this Agreement that relate to Termination Products following (the “Product Information”), within sixty (60) days of such termination, and Licensor shall have the right to use any such Product Information in developing and commercializing Termination Products, and to license any Third Parties to do so.
9.3.1.6 Licensee, its Affiliates and Sublicensees will, at its own costs and expenses, wind down any Development, Manufacturing, and Commercialization activities with respect to the relevant Termination Products, as quickly as reasonably practicable, subject to compliance with Applicable Laws.
9.3.2 Upon termination (not expiration) of this Agreement by Licensee due to Licensor suffering of an Insolvency Event under Section 9.2 or termination of this Agreement so long as LICENSEE has fully paidby mutual agreement of the Parties, the terms and continues conditions set forth in Section 9.3.1 shall apply, except that Licensor shall reimburse Licensee for all out-of-pocket costs and expenses incurred with respect to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in winding down the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectivelyManufacture, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allTermination Products.
Appears in 1 contract
Sources: License, Research, and Co Development Agreement (HCW Biologics Inc.)
Effect of Termination or Expiration. 13.6.1 7.3.1 Upon termination or expiration of this Agreement, LICENSEE the license granted to Curis under Section 3.1 shall pay become royalty-free, fully paid-up, irrevocable and perpetual.
7.3.2 Upon any termination of this Agreement by either Party under Section 7.2, all rights and licenses granted to NOVARTIS Curis under Article 3 shall immediately terminate.
7.3.3 Upon termination of this Agreement by Genentech for Curis’ uncured material breach pursuant to Section 7.2.1, or termination of this Agreement by Curis pursuant to Section 7.2.2:
(a) Curis and its Affiliates and Sublicensees shall discontinue making any representation regarding its status as a licensee of Genentech for all Fees or other amounts due Licensed Products.
(b) Subject to NOVARTIS this Section 7.3.3, Genentech shall have the right to develop and commercialize any and all Licensed Products, including any Combination Products, existing as of the effective date of such termination (each, a “Termination Product”) itself or expiration with one or more Third Parties, and shall have the right, without obligation to Curis, to take any such actions in connection with such activities as Genentech (or its designee), at its discretion, deems appropriate.
(i) In the event the preceding termination arises under Section 7.2.2, then effective upon such termination, Curis hereby grants to Genentech (A) a worldwide, non-exclusive, fully paid up, irrevocable license (with full rights to sublicense) under any Patents or Know-How Controlled by Curis necessary or useful to make, have made, import, use, offer for sale and sell Termination Products (collectively, “Curis IP”), solely to make, have made, import, use, offer for sale and sell Termination Products in the Field; and (B) a right of first negotiation, exercisable within [**] days after such termination, to obtain a worldwide, exclusive, royalty-bearing license (with full rights to sublicense), under the Curis IP, solely to develop, make, have made, use, sell, offer for sale, and import Termination Products in the Field, on commercially reasonable terms to be negotiated by the Parties in good faith.
(ii) In the event the preceding termination arises under Section 7.2.1, then effective upon such termination, Curis hereby grants to Genentech a worldwide, exclusive, fully paid up, irrevocable license (with full rights to sublicense) under Curis IP solely to make, have made, import, use, offer for sale and sell Termination Products in the Field.
(iii) Notwithstanding the foregoing in (i) and (ii), to the extent the Curis IP includes Patents licensed to Curis by a Third Party that are subject to royalty or milestone payment obligations to such Third Party, then Curis shall so notify Genentech, including a true, complete and correct description of such royalty and milestone payment obligations, and the inclusion of such Third Party Patents in the license granted to Genentech shall be subject to Genentech’s agreeing in writing to reimburse, and promptly reimbursing, Curis for all royalty and milestone payments that become due to such Third Party by reason of the development, manufacture or commercialization of Termination Products by or on behalf of Genentech, its Affiliates and Third Party licensees and sublicensees.
(c) Curis shall assign, or cause to be assigned, to Genentech, and will provide full copies of, any or all Marketing Approvals, INDs, Drug Approval Applications and any or all other regulatory filings owned by Curis and its Affiliates, that relate to Termination Products upon Genentech’s request. Curis shall also take such actions and execute such other instruments, assignments and documents as may be necessary to effect the transfer of rights thereunder to Genentech.
(d) Curis will provide to Genentech copies of all material reports and data, including clinical study, non-clinical, development and manufacturing data and reports obtained or generated by or on behalf of Curis or its Affiliates pursuant to this Agreement that relate to Termination Products, within [**] days following the effective date of termination or expiration.
13.6.2 Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement)such termination, NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE Genentech shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paiduse any such information in developing and commercializing Termination Products, and continues to fully pay when due, license any and all Fees owed Third Parties to NOVARTIS.
13.6.4 Upon termination of this Agreement:do so;
(ae) LICENSEE hereby grants If Curis used one or more ▇▇▇▇▇ ▇▇▇▇▇ specifically and solely in connection with the sale or marketing of any Termination Product in a country, Curis shall grant to NOVARTIS a nonGenentech an exclusive (even as to Curis), worldwide, fully-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, to Use use such ▇▇▇▇▇ ▇▇▇▇(s) solely in connection with the development and commercialization of such Termination Product. For clarity, Genentech shall under no circumstance receive any and rights under the Curis corporate trademarks or house marks, including Curis’ corporate name (collectively, “Curis Corporate Marks”), provided that if Genentech purchases from Curis pursuant to Section 7.3.3(f) any inventory of such Termination Product that is already labeled with any Curis Corporate ▇▇▇▇, Genentech shall have the right to sell such inventory.
(f) At Genentech’s request, Curis shall promptly provide to Genentech copies of all Developed IP clinical trial, contract manufacturing, or service agreements then in effect between Curis and any Third Party with respect to the Termination Products, redacting any information within any such agreement that relates to any program, compound or product other Intellectual Property Rights Controlled than Compound and Termination Products. At Genentech’s request, Curis shall promptly assign (or cause to be assigned) such agreements to Genentech, to the extent such assignment is permitted under such agreement and excluding any such agreement that also relates to any program, compound or product other than Compound and Termination Products, and effective upon assignment of any such agreement, Genentech shall, and hereby does, assume all of Curis’ obligations under such agreement. In the event that such an assignment is not permitted under any such clinical trial, contract manufacturing, or service agreement, then Curis shall use Commercially Reasonable Efforts (at Genentech’s request) to assist Genentech in obtaining the benefits of such agreement, provided that Genentech undertakes in writing to fulfill all obligations of Curis arising under such agreement as a result thereof.
(g) Curis will return to Genentech any remaining Transferred Materials then in existence at no cost to Genentech. Genentech shall have the right, but not the obligation, to purchase from Curis any or all usable clinical and/or commercial inventory of Termination Product in Curis’ or its Affiliates’ possession as of the date of termination. Clinical inventory shall be provided at a transfer price equal to Curis’ fully burdened manufacturing cost for the Termination Product, and commercial inventory shall be provided at a transfer price equal to [**]% of Curis’ fully burdened manufacturing cost for the Termination Product. Genentech shall be responsible for any packaging, transport, insurance and other costs relating to delivery.
(h) If Curis was, prior to termination, manufacturing, or having manufactured on its behalf, any clinical or commercial quantities of Termination Products, then at Genentech’s request, until the earlier of (i) such time as Genentech is able to secure another source of Termination Products that is able to meet Genentech’s Termination Product quality and quantity requirements (whether by LICENSEE that LICENSEE actually used establishing its own manufacturing capability or contracting with a Third Party manufacturer), and (ii) [**] months after such termination, Curis shall use Commercially Reasonable Efforts to supply, or cause to be supplied, to Genentech such quantities of Termination Products as Genentech may reasonably require for the development and commercialization of Termination Products in the DevelopmentField; provided that Genentech shall use Commercially Reasonable Efforts to secure another source of supply of Termination Products as soon as reasonably practicable. Clinical material supplied pursuant to this Section 7.3.3(h) shall be provided at a transfer price equal to Curis’ fully burdened manufacturing cost for the Termination Products, and commercial material supplied pursuant to this Section 7.3.3(h) shall be supplied at a transfer price equal to (A) during the first [**] months after such termination, [**]% of Curis’ fully burdened manufacturing cost for the Termination Products, or (B) thereafter, [**]% of Curis’ fully burdened manufacturing cost for the Termination Products.
(i) If, prior to termination, Curis was having a Third Party manufacture Termination Products on its behalf, then promptly after the effective date of such termination, Curis shall provide written authorization to such Third Party contract manufacturer to perform such manufacturing technology transfer activities as are reasonably necessary for Genentech and/or its Third Party designees, as applicable, to reproduce the manufacturing process for such Termination Products. Genentech shall be responsible for negotiating the terms of such manufacturing technology transfer with Curis’ contract manufacturer and for all fees and costs charged by such contract manufacturer in connection therewith.
(j) If any documentation or Commercialization records regarding the manufacturing process for Termination Products are held by Curis (and are not available from Curis’ Third Party contract manufacturer, if any), then promptly after the effective date of such termination, Curis shall provide copies of such documentation and records to Genentech, or grant Genentech and/or its designees (at Genentech’s request), access to such documentation and records, and Genentech shall reimburse Curis for the Product out-of-pocket costs incurred by Curis in providing such copies or access.
(k) If, prior to termination, Curis was manufacturing Termination Products itself, then, until the earlier of (i) such time as the Product exists at Genentech is able to secure another source of Termination Products that is able to meet Genentech’s quality and quantity requirements for Termination Products (whether by establishing its own manufacturing capability or contracting with a Third Party manufacturer), and (ii) [**] after such termination, Curis shall provide reasonable technical assistance to Genentech or its designee as necessary to provide technology transfer necessary for Genentech to commence or continue to commercially manufacture Termination Products, for which assistance Genentech shall reimburse Curis for the time of termination (“collectivelyCuris personnel providing such assistance at a reasonable hourly rate to be negotiated in good faith by the Parties and shall reimburse the out-of-pocket costs incurred by Curis in providing such assistance.
7.3.4 Termination or expiration of this Agreement, “Reversion IP”)through any means and for any reason, solely for shall not relieve the Development Parties of any obligation accruing prior thereto, including the payment of all sums due and Commercialization payable, and shall be without prejudice to the rights and remedies of either Party with respect to any breach of any of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in provisions of this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allAgreement.
Appears in 1 contract
Effect of Termination or Expiration. 13.6.1 Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS all Fees or other amounts due to NOVARTIS as of the effective date of termination or expiration within [***] days following the effective date of termination or expiration.
13.6.2 Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allall CONFIDENTIAL TREATMENT REQUESTED. INFORMATION FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED IS OMITTED AND MARKED WITH “[***]”. AN UNREDACTED VERSION OF THE DOCUMENT HAS ALSO BEEN FURNISHED SEPARATELY TO THE SECURITIES AND EXCHANGE COMMISSION AS REQUIRED BY RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED. amounts owed to such Third Party as a result of NOVARTIS’ exercise of such license and comply with all obligations under any such Third Party license that are applicable to LICENSEE as a Sublicensee thereunder, and thereafter so reimburses LICENSEE and complies with such terms;
(b) to the extent permitted by applicable Regulatory Authorities, LICENSEE shall: (i) transfer to NOVARTIS all Regulatory Filings and Regulatory Approvals held by LICENSEE that are solely related to the Product; and (ii) to the extent subsection (i) is not permitted by the applicable Regulatory Authority and with respect to Regulatory Filings held by LICENSEE that are not solely related to the Product, permit NOVARTIS to cross-reference and rely upon any Regulatory Approvals and Regulatory Filings filed by LICENSEE with respect to the Product solely to Use the Products;
(c) LICENSEE, if requested in writing by NOVARTIS, shall provide any and all material correspondence with the relevant patent offices pertaining to the LICENSEE’s prosecution of the Licensed Patent Rights to the extent not previously provided to NOVARTIS during the course of the Agreement;
(d) effective as of the date of termination, LICENSEE hereby grants to NOVARTIS a fully paid-up, royalty-free, worldwide, transferable, sublicensable, perpetual and irrevocable license to use the Trademarks Controlled by LICENSEE solely identifying a Product for the purpose of Commercializing the Products;
(e) LICENSEE will responsibly wind-down, in accordance with accepted pharmaceutical industry norms and ethical practices, any on-going clinical studies of Products for which it has responsibility hereunder in which patient dosing has commenced or, if reasonably practicable and requested by NOVARTIS, allow NOVARTIS or its Affiliates or a Third Party that is designated in writing by NOVARTIS (“Designated Affiliate/Third Party”) to complete such trials (and then assign to NOVARTIS all related Regulatory Filings, Regulatory Approvals, and investigator and other agreements relating to such studies). LICENSEE shall be responsible for any Development costs associated with such wind-down; provided that NOVARTIS shall pay all Development costs incurred by either Party to complete such studies should NOVARTIS request that such studies be completed. During any such winding down of ongoing trials, LICENSEE shall provide such knowledge transfer and other training to NOVARTIS or its Designated Affiliate/Third Party as reasonably necessary for NOVARTIS or the Designated Affiliate/Third Party to continue CONFIDENTIAL TREATMENT REQUESTED. INFORMATION FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED IS OMITTED AND MARKED WITH “[***]”. AN UNREDACTED VERSION OF THE DOCUMENT HAS ALSO BEEN FURNISHED SEPARATELY TO THE SECURITIES AND EXCHANGE COMMISSION AS REQUIRED BY RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
Appears in 1 contract
Sources: License Agreement
Effect of Termination or Expiration. 13.6.1 12.4.1 Upon the natural expiration of this Agreement, LICENSOR hereby grants to LICENSEE a royalty-free, fully paid-up right and non-exclusive license to use the Licensed Know-How for the purpose of the Development and Commercialization of the Licensed Products in the Field within the Territory.
12.4.2 Upon termination or the natural expiration of this Agreement, LICENSEE shall pay to NOVARTIS LICENSOR all Fees or other amounts due to NOVARTIS LICENSOR as of the effective date of termination or expiration within [***] days ([***]) [***] following the effective date of termination or expiration.
13.6.2 12.4.3 Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products Licensed Product for a period of [***] ([***]) [***] following the termination of this Agreement so long as LICENSEE is able to do so in compliance with Applicable Laws and has fully paid, and continues to fully pay when due, any and all Royalties, Milestone Payments and Sublicense Fees owed to NOVARTISLICENSOR, and LICENSEE otherwise is not in material breach of this Agreement.
13.6.4 12.4.4 Subject to Section 12.4.3, upon termination of this Agreement, all licenses granted by LICENSOR to LICENSEE shall terminate, provided that any sublicenses granted by LICENSEE hereunder shall survive; provided further that each sublicensee is then in full compliance with its sublicense agreement and promptly agrees in writing to be bound by the applicable terms of this Agreement and agrees to pay directly to LICENSOR the amounts due thereunder.
12.4.5 Upon termination of this AgreementAgreement for LICENSEE’s breach pursuant to Section 12.2 or termination under Section 12.3:
(a) LICENSEE hereby grants to NOVARTIS LICENSOR a non-exclusive, fully paid-up, royalty-freebearing (pursuant to subsection (d) below), worldwide, transferable, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Improvements Controlled by LICENSEE that LICENSEE actually used in are necessary for the Development, manufacture Development or Commercialization of the Licensed Products and were not already required to be assigned to LICENSOR pursuant to Section 6.3.
(b) To the extent permitted by applicable Regulatory Authorities, LICENSEE shall at LICENSOR’s sole cost and expense (i) transfer to LICENSOR all Regulatory Filings, Regulatory Approvals and data (including safety data) held by LICENSEE with respect to the Licensed Products and (ii) to the extent subsection (i) is not permitted by the applicable Regulatory Authority, permit LICENSOR to cross-reference and rely upon any Regulatory Approvals and Regulatory Filings filed by LICENSEE with respect to the Licensed Products.
(c) Upon LICENSOR’s request and so long as LICENSOR was not otherwise in breach of this Agreement, LICENSEE shall use Commercially Reasonable Efforts to continue, at LICENSOR’s sole cost and expense, all on-going Development for a mutually agreed upon migration period after termination of this Agreement, which period shall not be less than [***] ([***]) [***] unless otherwise agreed to by the Parties (“Migration Period”). During the Migration Period, LICENSEE shall use Commercially Reasonable Efforts to provide such knowledge transfer and other training to LICENSOR or its Affiliates or a Third Party, at LICENSOR’s sole costs and expense that is designated in writing by LICENSOR (“Designated Affiliate/Third Party”) as reasonably necessary for LICENSOR or the Designated Affiliate/Third Party to continue such activities. In connection with such transfer, LICENSEE shall, at LICENSOR’s option: (i) transfer to LICENSOR or the Designated Affiliate/Third Party all Licensed Product as the Product exists at the time of termination cost paid by LICENSEE to manufacture such Licensed Product; (“collectively, “Reversion IP”), solely ii) transfer to LICENSOR or the Designated Affiliate/Third Party all Licensee Inventory owned by LICENSEE at the cost paid by LICENSEE for such Licensee Inventory; and (iii) assign to LICENSOR or the Designated Affiliate/Third Party any agreements with Third Parties related exclusively to the Development and or Commercialization of the Products provided howeverLicensed Products. As used herein, that if any such Reversion IP is in-licensed from a Third Party “Licensee Inventory” means all components and subject to payment and other applicable obligations to such Third Party, works in process produced or held by LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject with respect to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allmanufacture of Licensed Product.
Appears in 1 contract
Effect of Termination or Expiration. 13.6.1 7.4.1 Upon termination or the expiration of this Agreement, LICENSEE or the termination of this Agreement by DexCom under Section 7.2.1 or by SMTLLC under Section 7.3, any licenses granted to SMTLLC pursuant to Section 2.4 shall pay continue, all licenses granted to NOVARTIS DexCom hereunder shall be immediately terminated. DexCom shall return to SMTLLC all Fees or other amounts due to NOVARTIS as embodiments of the SMTLLC Technology, and all payment obligations hereunder, except those incurred before the effective date of expiration or termination, shall cease. Upon termination or expiration within [***] days following the effective date of termination or expiration.
13.6.2 Upon expiration of this Agreement pursuant by DexCom under Section 7.2.1 or by SMTLLC under Section 7.3, any sublicensee of DexCom shall automatically become a direct licensee of SMTLLC with respect to Section 13.1 (but the rights originally sublicensed to it by DexCom under the SMTLLC Patents, provided such sublicensee did not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use cause the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) and such sublicensee agrees to comply with all licenses granted by NOVARTIS to LICENSEE will terminate; of the terms of this Agreement and (ii) LICENSEE shall have assume the right to sell its remaining inventory responsibilities of Products following the DexCom hereunder.
7.4.2 Upon termination of this Agreement so long as LICENSEE has fully paidby DexCom under Section 7.2.2, for breach by SMTLLC of Representations and continues to fully pay when dueWarranties (Section 9.1, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS 9.2.2), DexCom shall have a non-exclusiveworldwide, fully paid-up, royalty-free, worldwide, perpetual and irrevocable licensenon-exclusive license under the SMTLLC Technology to make, with the right to sublicensehave made, to Use use, sell, and import Licensed Products and Reportable Products. In addition, SMTLLC shall return any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used Confidential Information of DexCom in the Development, manufacture or Commercialization of the Product as the Product exists * CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC INFORMATION HAS BEEN FILED WITH THE SEC. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. its possession at the time of termination (“collectivelytermination. If, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations prior to such Third Partytermination, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to DexCom has exercised its option under Section 2.3, then the license granted in the preceding sentence shall extend to Future Products.
7.4.3 Upon the termination or expiration of this Agreement for any reason other than under Section 13.6.4
(a) only if NOVARTIS agrees 7.2.2, each party shall return any and all Confidential Information of the other party in writing its possession at the time of such termination or expiration. Termination or expiration of this Agreement shall not relieve the parties of any obligation accruing prior to reimburse LICENSEE for allsuch termination or expiration.
Appears in 1 contract
Effect of Termination or Expiration. 13.6.1 (a) Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS all Fees or other amounts due to NOVARTIS as of the effective date of termination or expiration within [***] days following the effective date of termination or expiration.
13.6.2 Upon expiration of this Agreement by Wyeth pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.9.2:
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all rights under the licenses granted by NOVARTIS under Section 2.1 shall automatically terminate and revert to LICENSEE will terminate; and Exelixis;
(ii) LICENSEE Wyeth shall not, for a period of [ * ] following such termination, make, have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paidmade, use, sell, have sold, offer for sale and import any Uncovered Product;
(iii) Wyeth shall, and continues it hereby does, grant to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS Exelixis a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, under the Wyeth Know-How and Wyeth Patent Rights and Wyeth’s interest in the Joint Patent Rights, solely to Use make, have made, use, sell, have sold, offer for sale and import any and all Developed IP Product [ * ] that [ * ] and any Licensed Compound contained in any such Product. Any license granted to Exelixis under this Section 9.4(a)(iii) shall be: (a) Exclusive with respect to the composition of matter of any such Licensed Compound; (b) non-exclusive in all other Intellectual Property respects; and (c) subject to royalties payable by Exelixis to Wyeth of [ * ] of Applicable Net Sales;
(iv) Notwithstanding the Exclusive rights granted to Exelixis in Section 9.4(a)(iii) with respect to Licensed Compounds, Wyeth retains the right under the Wyeth [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Patent Rights, the Wyeth Know-How and Wyeth’s interest in the Joint Patent Rights to make, have made, use, and test any Licensed Compound covered by the rights granted in Section 9.4(a)(iii) for Wyeth’s internal, self-funded research purposes. For the avoidance of doubt, Wyeth retains no right to sell, offer for sale or have sold or to make, have made or use for non-research purposes any Licensed Compound; and
(v) Wyeth shall: (A) to the extent available, transfer and assign to Exelixis all of Wyeth’s right, title and interest in and to all INDs, NDAs, drug dossiers, and Regulatory Approvals with respect to each Product for which Exelixis acquires a license pursuant to Section 9.4(a)(iii); and (B) to the extent not contained in an IND or NDA for a Product for which Exelixis acquires a license pursuant to Section 9.4(a)(iii), transfer to Exelixis the following information relating to each Licensed Compound for which Exelixis acquires a license pursuant to Section 9.4(a)(iii), to the extent available: [ * ]. Except as expressly provided in this Section 9.4(a), no provision of this Agreement shall be construed to grant any express or implied license or other right to Exelixis with regard to any Patent, Regulatory Approval or other intellectual property right Controlled by LICENSEE that LICENSEE actually used Wyeth or any Wyeth Affiliate. The rights provided to Exelixis under this Section 9.4(a) shall be Exelixis’ sole and exclusive remedy for Wyeth’s termination of this Agreement pursuant to Section 9.2.
(b) If Exelixis is entitled to terminate this Agreement pursuant to Section 9.3, Exelixis may elect, in its sole discretion:
(i) to terminate this Agreement, in which case, all rights under the licenses granted in Section 2.1 shall automatically terminate and revert to Exelixis and Exelixis shall be entitled to such damages and other remedies as it may have as a result of the Material Breach by Exelixis; or
(ii) to terminate this Agreement and accept as its sole and exclusive remedies for Wyeth’s breach of this Agreement, other than Wyeth’s breach of its payment obligations pursuant to Article 4 or its confidentiality obligations pursuant to Article 5, the following:
(1) all rights under the licenses granted under Section 2.1 shall automatically terminate and revert to Exelixis;
(2) Wyeth shall not at any time following such termination, make, have made, use, sell, have sold, offer for sale and import any Uncovered Product;
(3) Wyeth shall, and it hereby does, grant to Exelixis a worldwide, license, with the right to sublicense, under the Wyeth Know-How and Wyeth Patent Rights and Wyeth’s interest in the DevelopmentJoint Patent Rights, manufacture solely to make, have made, use, sell, have sold, offer for sale and import any Product [ * ] that [ * ] and any Licensed Compound contained in any such Product. Any license granted to Exelixis under this Section 9.4(b)(ii)(3) shall be: (A) Exclusive with respect the composition of matter of any such Licensed Compound, and (B) non-exclusive in all other respects;
(4) Notwithstanding the Exclusive rights granted to Exelixis in [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Section 9.4(b)(ii)(3) with respect to Licensed Compounds, Wyeth retains the right under the Wyeth Patent Rights, the Wyeth Know-How and Wyeth’s interest in the Joint Patent Rights to make, have made, use, and test any Licensed Compound covered by the rights granted in Section 9.4(b)(ii)(3) for Wyeth’s internal, self-funded research purposes. For the avoidance of doubt, Wyeth retains no right to sell, offer for sale or Commercialization have sold or to make, have made or use for non-research purposes any Licensed Compound; and
(5) Wyeth shall: (A) to the extent available, transfer and assign to Exelixis all of Wyeth’s right, title and interest in and to all INDs, NDAs, drug dossiers, and Regulatory Approvals with respect to each Product for which Exelixis acquires a license pursuant to Section 9.4(b)(ii)(3); and (B) to the extent not contained in an IND or NDA for a Product for which Exelixis acquires a license pursuant to Section 9.4(b)(ii)(3), transfer to Exelixis the following information relating to each Licensed Compound for which Exelixis acquires a license pursuant to Section 9.4(b)(ii)(3), to the extent available: [ * ]. Except as expressly provided in this Section 9.4(b), no provision of this Agreement shall be construed to grant any express or implied license or other right to Exelixis with regard to any Patent, Regulatory Approval or other intellectual property right Controlled by Wyeth or any Wyeth Affiliate.
(c) If Wyeth is entitled to terminate this Agreement pursuant to Section 9.3, Wyeth may elect, in its sole discretion:
(i) to terminate this Agreement, in which case, all rights under the licenses granted in Section 2.1 shall automatically terminate and revert to Exelixis and Wyeth shall be entitled to such damages and other remedies as it may have as a result of the Product Material Breach by Exelixis; or
(ii) to convert its license under Section 2.1 to a permanent and irrevocable license subject only to Wyeth’s continuing obligation to pay royalties to Exelixis at the rates and as provided in Article 4 but not beyond the Product exists date on which Wyeth’s royalty payment obligations would otherwise expire, on a country-by-country basis, pursuant to Section 4.5, provided that Wyeth shall be entitled to set off up to [ * ] of its continuing royalty obligations against [ * ], and further provided that [ * ].
(d) Termination or expiration of this Agreement for any reason shall not release either Party hereto from any liability which, at the time of such termination (“collectivelyor expiration, “Reversion IP”)has already accrued to the other Party or which is attributable to a period prior to such termination or expiration or preclude either Party from pursuing any rights and remedies it may have hereunder or at law or in equity with respect to any breach of, solely or default under, this Agreement. It is understood and agreed that monetary damages may not be a sufficient remedy for any breach of this Agreement and that the Development and Commercialization of the Products provided however, that if non-breaching Party may be entitled to specific performance as a partial remedy for any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allbreach.
Appears in 1 contract
Sources: License Agreement
Effect of Termination or Expiration. 13.6.1 15.6.1. Upon termination or expiration of this Agreement, LICENSEE IMMEDICA shall pay to NOVARTIS LICENSOR all Fees or other amounts due to NOVARTIS LICENSOR as of the effective date of termination or expiration within [***] days following the effective date of termination or expiration.
13.6.2 15.6.2. Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE IMMEDICA shall have the right to sell its remaining inventory of Products Product following the termination of this Agreement so long as LICENSEE IMMEDICA has fully paid, and continues to fully pay when due, any and all Fees Royalties owed to NOVARTISLICENSOR, and IMMEDICA otherwise is not in material breach of this Agreement.
13.6.4 15.6.3. Upon termination of this Agreement but not expiration, all licenses granted by one Party to the other Party shall terminate. For clarity, termination of the licenses granted by LICENSOR to IMMEDICA shall terminate all sublicenses granted by IMMEDICA hereunder.
15.6.4. With the exception of termination of this Agreement by IMMEDICA pursuant to Section 15.2 or 15.3, upon termination of this Agreement:
(a) LICENSEE hereby grants To the extent permitted by applicable Regulatory Authorities, IMMEDICA shall, at IMMEDICA’s cost: (i) transfer, or cause to NOVARTIS a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicensebe transferred, to Use any LICENSOR all Regulatory Filings and all Developed IP Regulatory Approvals held by IMMEDICA, its Affiliates and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject its Sublicensees with respect to the license granted in this Section 13.6.4
Product, and (aii) only if NOVARTIS agrees in writing to reimburse LICENSEE for allthe extent subsection (i) is not permitted by the applicable Regulatory Authority, permit LICENSOR, or cause its Affiliates and its Sublicensees to permit LICENSOR to cross-reference and rely upon any Regulatory Approvals and Regulatory Filings owned by IMMEDICA, its Affiliates and its Sublicensees with respect to the Product.
Appears in 1 contract
Sources: Exclusive License and Supply Agreement (Actinium Pharmaceuticals, Inc.)
Effect of Termination or Expiration. 13.6.1 Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS all Fees neither Service Provider nor Sponsor will have any further obligations under this Agreement, or other amounts due to NOVARTIS as of in the effective date case of termination or expiration within of a Work Order, under that Work Order, except that:
(a) Service Provider will wind down and terminate all affected Services in progress in an orderly manner as soon as practical using best efforts to minimize further costs and in accordance with a schedule agreed to by Sponsor, unless Sponsor specifies in the notice of termination that Services in progress should be completed and Service Provider agrees to complete such Services;
(b) Service Provider will deliver to Sponsor or, at Sponsor’s option, dispose of, any Materials in its possession or control and all Deliverables developed through termination or expiration;
(c) Sponsor will pay Service Provider any monies due and owing Service Provider, up to the time of termination or expiration, for Services properly performed and all authorized expenses actually incurred (as specified in the applicable Work Order). In addition, Sponsor shall pay Service Provider for time spent by Service Provider Personnel to complete activities associated with the termination and close-out of the Services, including the fulfillment of any regulatory requirements;
(d) Service Provider will promptly refund any monies paid in advance by Sponsor for Services not rendered;
(e) Each Recipient will promptly return to the Discloser all of Discloser’s Confidential Information (including all copies) provided to Recipient under this Agreement or under any Work Order which has been terminated or has expired, except for one (1) copy which Recipient may retain solely to monitor Recipient’s surviving obligations of confidentiality and non-use and, in the case of Sponsor, to exercise all surviving rights of Sponsor under this Agreement; and
(f) The terms and conditions under Sections 2.4, 2.5, 2.8, 3, 4.1, 4.2, 4.4, 4.6, 5, 6, 7, 8.4 and 9 will survive any such termination or expiration. [***] days following the effective date of termination or expiration.
13.6.2 Upon expiration Portions of this Agreement exhibit have been redacted pursuant to Section 13.1 (but not upon termination a confidential treatment request. An unredacted version of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE exhibit has fully paid, and continues to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, been filed separately with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allCommission.
Appears in 1 contract
Sources: Master Services Agreement (Akebia Therapeutics, Inc.)
Effect of Termination or Expiration. 13.6.1 13.6.1. Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS PFIZER all Fees or other amounts due to NOVARTIS PFIZER with respect to the terminated Product(s) as of the effective date of termination or expiration within [***] thirty (30) days following the effective date of termination or expiration.
13.6.2 13.6.2. Upon expiration termination of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement)after a First Commercial Sale, NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products any terminated Product(s) following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, any and all Fees Royalties owed to NOVARTISPFIZER, and LICENSEE otherwise is not in material breach of this Agreement.
13.6.4 13.6.3. Upon termination of this Agreement, all licenses granted by PFIZER to LICENSEE with respect to the terminated Product(s) shall terminate, except for those licenses described in Section 13.1 that have already vested; provided, however, that PFIZER shall assume any related sublicenses granted by LICENSEE hereunder, and such sublicenses shall survive such termination, but PFIZER shall not be obligated to fulfill any obligations to such sublicensees beyond those obligations required of PFIZER if this Agreement had not terminated.
13.6.4. With the exception of termination of this Agreement by LICENSEE pursuant to Section 2.1.3, 13.2, 13.3 or 17.4, upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS PFIZER an exclusive, fully paid-up, royalty-free, worldwide, transferable, perpetual and irrevocable license, with the right to sublicense, under any Intellectual Property Rights (other than Trademarks, for which Section 13.6.4(c) applies) Controlled by LICENSEE that arose from the Development or Commercialization of the terminated Product by LICENSEE under this Agreement, solely to Use the terminated Product in the Field in the Territory.
(b) To the extent permitted by applicable Regulatory Authorities, LICENSEE shall: (i) transfer to PFIZER all Regulatory Filings (including drug master files) and Regulatory Approvals held by LICENSEE with respect to the terminated Product, and (ii) to the extent subsection (i) is not permitted by the applicable Regulatory Authority, permit PFIZER to cross-reference and rely upon any Regulatory Approvals and Regulatory Filings filed by LICENSEE with respect to the terminated Product.
(c) LICENSEE hereby grants to PFIZER a non-exclusive, fully paid-up, royalty-free, worldwide, transferable, sublicensable, perpetual and irrevocable license, with license to use the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Trademarks Controlled by LICENSEE that LICENSEE actually used in solely identifying the Developmentterminated Product (but, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization sake of clarity, excluding any Trademark or part thereof that uses the Products provided however, that if company name of LICENSEE or any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allAffiliate of
Appears in 1 contract
Sources: License Agreement (Medicines Co /De)
Effect of Termination or Expiration. 13.6.1 Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS all Fees or other amounts due to NOVARTIS as of the effective date of neither STA nor Akebia will have any further obligations under this Agreement, provided that such termination or expiration within shall be without prejudice to any rights that have accrued to the benefit of a Party prior to such expiration or termination, and further provided that:
(a) Akebia will promptly pay to STA the Product Price of any existing inventories of Product held by STA that are subject to a Purchase Order in effect at the time of such expiration or termination Payment by Akebia under Sections 14.6(a)(i) and 14.6(a)(ii) shall be contingent upon Akebia Release of any such Product, which Akebia Release [***] days following ].
(b) Except in the effective date event of termination of the Agreement by Akebia in accordance with Section 14.3. above, Akebia will promptly pay to STA (i) the cost of any [**], acting diligently in the ordinary course of business in order to perform the Services in accordance with an open Purchase Order provided by Akebia, and have not yet begun such Manufacture at the time of such expiration or expirationtermination, and (ii) any other non-cancellable obligations incurred in connection with the Services, to the extent that such obligations directly relate to an open Purchase Order provided by Akebia. At Akebia’s option, and with prior written notice to STA, STA will deliver or destroy all Product as directed by Akebia. Delivery shall be [**], and destruction shall be at Akebia’s cost.
13.6.2 Upon expiration (c) each Recipient will promptly return to the Discloser or destroy all of Discloser’s Confidential Information (including all copies) provided to Recipient under this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory13.3 above.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for all
Appears in 1 contract
Effect of Termination or Expiration. 13.6.1 13.6.1. Upon termination or expiration of this Agreement, LICENSEE ▇▇▇▇▇▇ shall pay to NOVARTIS Journey all Fees or other amounts due to NOVARTIS Journey as of the effective date of termination or expiration within [***] thirty (30) days following the effective date of termination or expiration.
13.6.2 13.6.2. Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination termination) of this Agreement), NOVARTIS Journey hereby grants to LICENSEE Maruho a sublicensable, royalty-free free, fully paid up, irrevocable and perpetual right and license to Use use a Journey Trademark used by ▇▇▇▇▇▇ and the Licensed Know-How to Use Compounds IP Rights for the purpose of the Exploitation of the Product in the Field within and Products within for the Territory.
13.6.3 Subject to Section 13.6.4(e), upon 13.6.3. Upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE ▇▇▇▇▇▇ shall have the right to sell its remaining inventory of Products Product following the termination of this Agreement so long as LICENSEE Maruho has fully paid, and continues to fully pay when due, any and all Fees royalties owed to NOVARTISJourney, and Maruho otherwise is not in material breach of this Agreement.
13.6.4 13.6.4. Upon termination of this Agreement, all licenses granted by Journey to ▇▇▇▇▇▇ (except as otherwise set forth in Section 2.1 with respect to the Know-How Perpetual License) shall terminate. For avoidance of doubt, termination of the licenses granted by Journey to ▇▇▇▇▇▇ shall terminate all sublicenses granted by ▇▇▇▇▇▇ hereunder related thereto.
13.6.5. Subject to Section 17.17, upon termination of this Agreement:
(a) LICENSEE Maruho shall: (i) at no costs to Journey, transfer to Journey all data, Regulatory Filings and Regulatory Approvals held by Maruho with respect to the Product, (ii) to the extent subsection (i) is not permitted by the Regulatory Authority, at no costs to Journey, permit Journey to cross- reference and rely upon any Regulatory Approvals and Regulatory Filings filed by Maruho with respect to the Product, and (iii) except as set forth in Section 13.6.3 cease the further manufacture, Development or Commercialization of Product in the Territory provided that if Maruho terminated this Agreement in accordance with 13.2 or 13.3 Journey shall pay reasonable consideration to Maruho for the transfer and cross reference. Notwithstanding the foregoing to contrary, in the case of a Bankruptcy Event of Journey, the provisions of this Section 13.6.5(a) shall not apply unless ▇▇▇▇▇▇ has elected to terminate this Agreement pursuant to Section 13.3.
(b) Except in the case of termination by Maruho under Section 13.2 or 13.3, Maruho hereby grants to NOVARTIS Journey a non-exclusive, fully paid-up, royalty-free, fully paid up, worldwide, transferable, sublicensable, perpetual and irrevocable license, with the right license to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of use the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely Trademarks for the Development and Commercialization purpose of manufacturing, marketing, distributing, selling or otherwise Exploiting the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allProduct.
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Effect of Termination or Expiration. 13.6.1 Upon any expiration or termination or expiration of this Agreement, LICENSEE except as expressly otherwise provided in this Agreement:
(a) all rights, licenses and authorizations granted to Licensee hereunder will immediately terminate;
(b) Licensee shall (A) immediately cease all use of and other activities with respect to the Software and Licensor Materials; (B) within thirty (30) days deliver to Licensor, or at Licensor's written request destroy, and permanently erase from all devices and systems Licensee directly or indirectly controls, the Software, the Documentation and the Licensor's Confidential Information, including all documents, files, and tangible materials (and any partial and complete copies) containing, reflecting, incorporating, or based on any of the foregoing, whether or not modified or merged into other materials; and (C) certify to Licensor in a written instrument that it has complied with the requirements of this Section 14.4; and
(c) if Licensee terminates this Agreement pursuant to Section 14.3(b), Licensee will be relieved of any obligation to pay any additional Fees attributable to NOVARTIS all the period after the effective date of such termination and Licensor will: (i) refund to Licensee Fees or other amounts due to NOVARTIS paid in advance for Software that Licensor has not performed as of the effective date of termination or expiration within [***] days following (for the effective date avoidance of termination or expiration.doubt, this does not include a prorated amount of annual fees), and (ii) pay to Licensee any unpaid Service Credits to which Licensee is entitled; and
13.6.2 Upon expiration of (d) if Licensor terminates this Agreement pursuant to Section 13.1 (14.3(a) or Section 14.3(b), all Fees that would have become payable had the Agreement remained in effect until expiration of the Term will become immediately due and payable, and Licensee shall pay such Fees, together with all previously-accrued but not upon termination yet paid Fees, on receipt of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the TerritoryLicensor’s invoice therefor.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for all
Appears in 1 contract
Effect of Termination or Expiration. 13.6.1 Upon termination or expiration of this AgreementAgreement for a reason set forth in Section 11.1, LICENSEE shall pay to NOVARTIS all Fees or other amounts due to NOVARTIS as of the effective date of termination or expiration within [***] days following the effective date of termination or expiration.
13.6.2 Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreementabove:
(a) LICENSEE hereby grants Licensee shall pay to NOVARTIS a nonLicensor all Royalties accrued on Net Sales, and Licensee shall continue to be obligated to pay to Licensor all Royalties that accrue on Net Sales made during the sell-exclusiveoff period, fully paid-upif any;
(b) Licensee shall be deemed to have automatically assigned all copyright, royalty-freetrademark and service ▇▇▇▇ rights, worldwideequities, perpetual goodwill, titles and irrevocable licenseother rights in or to the Licensed Marks and all adaptations, with compilations, modifications, translations and versions thereof to Licensor, without consideration other than the right to sublicensemutual covenants and considerations of this Agreement. Upon Licensor’s request, to Use Licensee shall execute any and all Developed IP documents necessary to give effect to such assignments in all jurisdictions requiring such documentation; and
(c) Licensee shall send Licensor a complete and detailed inventory of all screens, dies, molds, color separations, plates negatives or similar materials (“Production Materials”) previously used to manufacture Licensed Articles within [———-]79;
(d) Licensee acknowledges and agrees that upon such termination, all Minimum Annual Royalty payments payable pursuant to this Agreement for the lesser of the following periods (i) [———-]80 period following the quarter in which such termination occurs or (ii) the remainder of the Term as liquidated damages and not as a penalty, shall accelerate and become due and payable to Licensor within [———-]81 of such termination. Notwithstanding anything to the contrary herein or elsewhere contained, upon payment of such liquidated damages, except with respect to those provisions which survive termination, this Agreement shall automatically terminate and be of no further force and effect without any other Intellectual Property Rights Controlled action by LICENSEE that LICENSEE actually used in or on behalf of Licensor or Licensee, and neither party shall have any further claims against the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allother.
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Effect of Termination or Expiration. 13.6.1 13.6.1. Upon termination or expiration of this Agreement, LICENSEE ▇▇▇▇▇▇ shall pay to NOVARTIS Journey all Fees or other amounts due to NOVARTIS Journey as of the effective date of termination or expiration within [***] thirty (30) days following the effective date of termination or expiration.
13.6.2 13.6.2. Upon expiration of this Agreement pursuant to Section 13.1 (but not upon termination termination) of this Agreement), NOVARTIS Journey hereby grants to LICENSEE Maruho a sublicensable, royalty-free free, fully paid up, irrevocable and perpetual right and license to Use use a Journey Trademark used by ▇▇▇▇▇▇ and the Licensed Know-How to Use Compounds and Products IP Rights for the purpose of the Exploitation of the Product in the Field within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon 13.6.3. Upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE ▇▇▇▇▇▇ shall have the right to sell its remaining inventory of Products Product following the termination of this Agreement so long as LICENSEE Maruho has fully paid, and continues to fully pay when due, any and all Fees royalties owed to NOVARTISJourney, and Maruho otherwise is not in material breach of this Agreement.
13.6.4 13.6.4. Upon termination of this Agreement, all licenses granted by Journey to ▇▇▇▇▇▇ (except as otherwise set forth in Section 2.1 with respect to the Know-How Perpetual License) shall terminate. For avoidance of doubt, termination of the licenses granted by Journey to ▇▇▇▇▇▇ shall terminate all sublicenses granted by ▇▇▇▇▇▇ hereunder related thereto.
13.6.5. Subject to Section 17.7, upon termination of this Agreement:
(a) LICENSEE Maruho shall: (i) at no costs to Journey, transfer to Journey all data, Regulatory Filings and Regulatory Approvals held by Maruho with respect to the Product, (ii) to the extent clause (i) is not permitted by the applicable Regulatory Authority, at no costs to Journey, permit Journey to cross- reference and rely upon any Regulatory Approvals and Regulatory Filings filed by Maruho with respect to the Product, and (iii) except as set forth in Section 13.6.3 cease the further manufacture, Development or Commercialization of Product in the Territory provided that if Maruho terminated this Agreement in accordance with Section 13.2 or Section 13.3 Journey shall pay reasonable consideration to Maruho for the transfer and cross reference. Notwithstanding the foregoing to contrary, in the case of a Bankruptcy Event of Journey, the provisions of this Section 13.6.5(a) shall not apply unless ▇▇▇▇▇▇ has elected to terminate this Agreement pursuant to Section 13.3.
(b) Except in the case of termination by Maruho under Section 13.2 or Section 13.3, Maruho hereby grants to NOVARTIS Journey a non-exclusive, fully paid-up, royalty-free, fully paid up, worldwide, transferable, sublicensable, perpetual and irrevocable license, with the right license to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used in the Development, manufacture or Commercialization of use the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely Trademarks for the Development and Commercialization purpose of manufacturing, marketing, distributing, selling or otherwise Exploiting the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allProduct.
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Effect of Termination or Expiration. 13.6.1 Upon termination or expiration of this Agreement:
(i) All license grants set forth herein automatically cease, LICENSEE shall pay to NOVARTIS and Retailer will immediately cease (a) soliciting Orders for Viasat Services, and (b) all Fees or other amounts due to NOVARTIS as advertising, promotion, and marketing of the effective date Viasat Services and immediately cease to represent and/or imply to any person or entity that Retailer is an Authorized Retailer for Viasat. Retailer must immediately take down any content referencing Viasat, or the Viasat Services in its physical or online locations.
(ii) Retailer shall cease using Viasat’s trademarks, trade names, service marks, logos or designations, and shall return or at Viasat’s request, destroy, all of the Confidential Information in its possession or control in accordance with Section 7.2.
(iii) Retailer will receive Commissions for New Subscribers activated within 30 days after termination or expiration within [***] of this Agreement; provided, however, that the last month's Commissions will be withheld pending final reconciliation of compensation and chargeback reserves for the 210 days following termination. In the effective date case of termination or expiration.
13.6.2 Upon expiration a Partial Termination, the surviving portion of this Agreement shall continue to operate without any changes and the first sentence of this Section 8.5(iii) applies only to Commissions related to the terminated portion of this Agreement.
(iv) Retailer will continue to receive Residual Commissions due under the applicable Rate Sheet for active Viasat Subscribers for whom Retailer was receiving Residual Commissions prior to termination if (a) Viasat terminates either part or all of this Agreement without cause pursuant to Section 13.1 8.3 and Retailer was an Active Retailer in the last full calendar quarter immediately prior to termination; or (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use b) Retailer terminates the Licensed Know-How to Use Compounds and Products within the TerritoryAgreement for cause under Section 8.1.
13.6.3 Subject (v) Viasat will cease paying Residual Commissions to Retailer if (a) Viasat terminates this Agreement for cause under Section 13.6.4(e), upon termination of this Agreement, 8.1 or 8.2; (ib) Viasat terminates either part or all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE without cause pursuant to Section 8.3 and Retailer was not an Active Retailer in
(vi) Viasat, at its option, may re-acquire any or all CPE and Business Equipment then in Retailer’s possession at prices not greater than the prices paid by Retailer for such CPE or Business Equipment (or, if the CPE or Business Equipment is not in unopened factory sealed boxes, 50% of such prices) subject to a restocking charge of 10% of the total purchase price of the returned CPE and Retailer paying all shipping and handling charges. Upon receipt of any such CPE or Business Equipment re-acquired from Retailer, Viasat shall issue an appropriate credit to Retailer’s account.
(vii) Within 30 days after termination, Retailer shall pay Viasat any applicable Chargeback Amount, unless Viasat has fully paid, and continues to fully pay when due, offset any and all Fees such Chargeback Amount against amounts owed to NOVARTIS.
13.6.4 Upon termination Retailer under Section 5.8 of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS a non-exclusiveAgreement or otherwise. Upon notice, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE Viasat may direct that LICENSEE actually used in the Development, manufacture or Commercialization of the Product as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided however, that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall Chargeback Amount be subject paid directly to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allMaster Agent or other paying agent.
Appears in 1 contract
Sources: Retailer Agreement
Effect of Termination or Expiration. 13.6.1 (a) Upon termination or expiration of this Agreement, LICENSEE shall pay to NOVARTIS all Fees or other amounts due to NOVARTIS as of the effective date of termination or expiration within [***] days following the effective date of termination or expiration.
13.6.2 Upon expiration of this Agreement by Wyeth pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.9.2:
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all rights under the licenses granted by NOVARTIS under Section 2.1 shall automatically terminate and revert to LICENSEE will terminate; and Exelixis;
(ii) LICENSEE Wyeth shall not, for a period of [ * ] following such termination, make, have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paidmade, use, sell, have sold, offer for sale and import any Uncovered Product;
(iii) Wyeth shall, and continues it hereby does, grant to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon termination of this Agreement:
(a) LICENSEE hereby grants to NOVARTIS Exelixis a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual and irrevocable license, with the right to sublicense, under the Wyeth Know-How and Wyeth Patent Rights and Wyeth’s interest in the Joint Patent Rights, solely to Use make, have made, use, sell, have sold, offer for sale and import any and all Developed IP Product [ * ] that [ * ] and any Licensed Compound contained in any such Product. Any license granted to Exelixis under this Section 9.4(a)(iii) shall be: (a) Exclusive with respect to the composition of matter of any such Licensed Compound; (b) non-exclusive in all other Intellectual Property Rights Controlled respects; and (c) subject to royalties payable by LICENSEE that LICENSEE actually used Exelixis to Wyeth of [ * ] of Applicable Net Sales;
(iv) Notwithstanding the Exclusive rights granted to Exelixis in Section 9.4(a)(iii) with respect to Licensed Compounds, Wyeth retains the right under the Wyeth [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Patent Rights, the Wyeth Know-How and Wyeth’s interest in the DevelopmentJoint Patent Rights to make, manufacture have made, use, and test any Licensed Compound covered by the rights granted in Section 9.4(a)(iii) for Wyeth’s internal, self-funded research purposes. For the avoidance of doubt, Wyeth retains no right to sell, offer for sale or Commercialization have sold or to make, have made or use for non-research purposes any Licensed Compound; and
(v) Wyeth shall: (A) to the extent available, transfer and assign to Exelixis all of Wyeth’s right, title and interest in and to all INDs, NDAs, drug dossiers, and Regulatory Approvals with respect to each Product for which Exelixis acquires a license pursuant to Section 9.4(a)(iii); and (B) to the extent not contained in an IND or NDA for a Product as the Product exists at the time of termination (“collectively, “Reversion IP”for which Exelixis acquires a license pursuant to Section 9.4(a)(iii), solely transfer to Exelixis the following information relating to each Licensed Compound for the Development and Commercialization of the Products provided howeverwhich Exelixis acquires a license pursuant to Section 9.4(a)(iii), that if any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Party, LICENSEE shall promptly disclose such obligations to NOVARTIS in writing and such Reversion IP shall be subject to the license granted extent available: [ * ]. Except as expressly provided in this Section 13.6.49.4(a), no provision of this Agreement shall be construed to grant any express or implied license or other right to Exelixis with regard to any Patent, Regulatory Approval or other intellectual property right Controlled by Wyeth or any Wyeth Affiliate. The rights provided to Exelixis under this Section 9.4(a) shall be Exelixis’ sole and exclusive remedy for Wyeth’s termination of this Agreement pursuant to Section 9.2.
(ab) only if NOVARTIS agrees If Exelixis is entitled to terminate this Agreement pursuant to Section 9.3, Exelixis may elect, in writing its sole discretion:
(i) to reimburse LICENSEE terminate this Agreement, in which case, all rights under the licenses granted in Section 2.1 shall automatically terminate and revert to Exelixis and Exelixis shall be entitled to such damages and other remedies as it may have as a result of the Material Breach by Exelixis; or
(ii) to terminate this Agreement and accept as its sole and exclusive remedies for allWyeth’s breach of this Agreement, other than Wyeth’s breach of its payment obligations pursuant to Article 4 or its confidentiality obligations pursuant to Article 5, the following:
(1) all rights under the licenses granted under Section 2.1 shall automatically terminate and revert to Exelixis;
(2) Wyeth shall not at any time following such termination, make, have made, use, sell, have sold, offer for sale and import any Uncovered Product;
(3) Wyeth shall, and it hereby does, grant to Exelixis a worldwide, license, with the right to sublicense, under the Wyeth Know-How and Wyeth Patent Rights and Wyeth’s interest in the Joint Patent Rights, solely to make, have made, use, sell, have sold, offer for sale and import any Product [ * ] that [ * ] and any Licensed Compound contained in any such Product. Any license granted to Exelixis under this Section 9.4(b)(ii)(3) shall be: (A) Exclusive with respect the composition of matter of any such Licensed Compound, and (B) non-exclusive in all other respects;
(4) Notwithstanding the Exclusive rights granted to Exelixis in [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.
Appears in 1 contract
Sources: License Agreement (Exelixis Inc)
Effect of Termination or Expiration. 13.6.1 Upon (a) Except for termination or expiration due to Licensee’s breach of this the Agreement, LICENSEE Licensor shall pay (i) provide reasonable cooperation and assistance to NOVARTIS Licensee upon Licensee’s written request and at Licensee’s expense, in transitioning to an alternate service provider; and (ii) on a pro rata basis, repay all License Fees or and other amounts due to NOVARTIS as charges paid in advance for any portion of the effective License Fee Term occurring after the date of termination or expiration within [***] days following the effective date of termination or expirationServices which have not been provided.
13.6.2 Upon (b) On the expiration of this Agreement pursuant to Section 13.1 (but not upon termination of this Agreement), NOVARTIS hereby grants to LICENSEE a royalty-free right and license to Use the Licensed Know-How to Use Compounds and Products within the Territory.
13.6.3 Subject to Section 13.6.4(e), upon termination of this Agreement, (i) all licenses granted by NOVARTIS to LICENSEE will terminate; and (ii) LICENSEE shall have the right to sell its remaining inventory of Products following the termination of this Agreement so long as LICENSEE has fully paid, and continues to fully pay when due, any and all Fees owed to NOVARTIS.
13.6.4 Upon or earlier termination of this Agreement:
(ai) LICENSEE hereby grants Except for as otherwise stated herein and as granted in Section 18.2(a), all rights, licenses, and authorizations granted to NOVARTIS Licensee hereunder will immediately terminate, and Licensee will [***];
(ii) Except for as otherwise stated herein and as granted in Section 18.2(b), all rights, licenses, and authorizations granted to Licensor hereunder will immediately terminate, and Licensor will (A) immediately cease all use of and other activities with respect to the Atlas Technology; (B) within [***] deliver to Licensee or, at Licensee’s option, destroy, and permanently erase from all devices and systems Licensor directly or indirectly controls, Licensee’s Confidential Information (except for Jointly Developed Technology & IP or any overlapping Licensor Confidential Information), including all documents, files, and tangible materials (and any partial and complete copies) containing, reflecting, incorporating, or based on any of the foregoing, whether or not modified or merged into other materials; and (C) certify to Licensee in a non-exclusive, fully paid-up, royalty-free, worldwide, perpetual signed written instrument that it has complied with the requirements of this Section 28.3 (b)(ii); and
(iii) all undisputed amounts that are due and irrevocable licensepayable by Licensee of any kind under this Agreement as of the effective date of expiration or termination of this Agreement are immediately payable and due no later than [***] after the effective date of the expiration or termination of this Agreement. For avoidance of doubt, with respect to License Fees, Licensee shall be responsible for only the right to sublicense, to Use any and all Developed IP and any other Intellectual Property Rights Controlled by LICENSEE that LICENSEE actually used prorated amount of License Fee based on the amount of time elapsed in the Development, manufacture or Commercialization applicable License Fee Term as of the Product date of expiration or termination. Licensor shall provide notice to Licensee of any remaining credits as the Product exists at the time of termination (“collectively, “Reversion IP”), solely for the Development and Commercialization of the Products provided howeverdate of expiration or termination of the Agreement, that and Licensee may offset its final payment accordingly (or, if Licensee chooses not to offset for any such Reversion IP is in-licensed from a Third Party and subject to payment and other applicable obligations to such Third Partyreason, LICENSEE Licensor shall promptly disclose such obligations pay to NOVARTIS in writing and such Reversion IP shall be subject Licensee an amount equal to the license granted in this Section 13.6.4
(a) only if NOVARTIS agrees in writing to reimburse LICENSEE for allcredits due as of the date of expiration or termination).
Appears in 1 contract