Effects of Expiration or Termination. (a) Upon termination of this Agreement in its entirety (in which case all Products are considered to be terminated), or upon non-election by Sobi pursuant to Sections 3.1(c)(i) or 3.1(c)(ii), or non-exercise by Sobi of its Opt-In Rights under Section 4.1(a), or upon termination with respect to a Product pursuant to Sections 14.2(a) or (b) (each Product that is so terminated or for which Sobi does not exercise its Opt-In Right and any product containing a Compound Construct for which Sobi does not elect its rights under Sections 3.1(c) shall be a “Terminated Product”): (i) The licenses granted by the Non-Continuing Party to the Continuing Party with respect to all Terminated Products shall remain in effect after such termination on a sublicenseable (provided that such sublicensees comply with the relevant provisions of this Agreement) basis and shall be converted to exclusive licenses to (A) Develop, Post Opt-In Develop, Finalize and Commercialize the Terminated Products anywhere in the world, and (B) Manufacture the Terminated Products anywhere in the world (which, if Sobi is the Non-Continuing Party, shall be limited to such rights under the Sobi Sole Collaboration IP and, only to the extent then (x) incorporated into or then being used in the Manufacture of the applicable Terminated Product or (y) planned (as evidenced by written documentation shared between the Parties prior to the date of termination) on being incorporated into, or being used in the Manufacture of, the applicable Terminated Product, other Sobi IP); (ii) The Non-Continuing Party, with respect to the Terminated Products, (A) shall, at the Non-Continuing Party’s expense, submit letter(s) or application(s) to the relevant Regulatory Authorities and take such other actions to transfer ownership of the Regulatory Filings and Regulatory Approvals in each country in the Territory to the Continuing Party within thirty (30) days after receipt of the required documentation from the Continuing Party for inclusion in such letter(s) or application(s) (provided, that, if, at the time of termination (or such non-election or non-exercise), any clinical trials are being conducted by the Non-Continuing Party, such transfer may be delayed, in the Continuing Party’s reasonable discretion, to permit the Non-Continuing Party to complete such clinical trials, and the Non-Continuing Party shall complete such trials at the Continuing Party’s expense); (B) shall, at the Non-Continuing Party’s expense, immediately assign to the Continuing Party, all of its right, title and interest in and to all of its Sole Collaboration IP and other clinical, technical and other relevant reports, records, data and other tangible Information specifically relating to the Terminated Products (provided that the Non-Continuing Party may retain one (1) copy of such Information in its archives solely to verify its compliance with its continuing obligations of confidentiality under this Agreement); (C) shall, at the Non-Continuing Party’s expense, take appropriate steps with the relevant Regulatory Authorities to effect such assignments (to the extent permitted under applicable law); (D) shall, at the Non-Continuing Party’s expense, deliver to the Continuing Party one (1) copy of each physical embodiment of the items in clauses (A) and (B) in a mutually agreeable format promptly but in no event more than thirty (30) days after such termination (or such non-election or non-exercise); (E) hereby grants to the Continuing Party, subject to such termination (or such non-election or non-exercise), a royalty-bearing license, with the right to grant sublicenses, to use the foregoing to Develop, Manufacture, Finalize and Commercialize the Terminated Products anywhere in the world; (F) shall, at the Non-Continuing Party’s expense, (1) assign to the Continuing Party, promptly after such termination (or such non-election or non-exercise), but in any event no later than thirty (30) days after such termination (or such non-election or non-exercise), all of its right, title and interest in and to the Product Trademarks for the Terminated Products and all goodwill therein, and any domain name registrations incorporating the brand names for the Terminated Products; and (2) assist the Continuing Party in taking appropriate steps with the relevant governmental authorities or, with respect to domain name registrations, domain name registrars, to effect such assignment; (G) the provisions of Sections 7.3, 7.4, 7.6, 7.7, 7.8 and 7.9 shall apply; provided, that the rights granted to a Party in its role as the Non-Owning Party thereunder shall apply only if the Non-Owning Party is the Continuing Party; (iii) The Non-Continuing Party shall assign to the Continuing Party any then-current Commercialization agreements with Third Parties (except as otherwise requested by the Continuing Party), the Continuing Party’s Territory shall be expanded to include all countries of the world, and the Continuing Party shall pay to the Non-Continuing Party, based on the date of which the Agreement is so terminated (or the date of such non-election or non-exercise), (A) the percentage (listed in the following table) of Net Sales by the Continuing Party or its Affiliates of each Terminated Product in each calendar quarter (provided, that, for purposes of this Section 14.3(a)(iii), sales made by Sublicensees of the Continuing Party shall not be considered in calculating Net Sales), and (B) the percentage (listed in the following table) of Sublicense Income or Net Partner Revenue received by the Continuing Party or its Affiliates with respect to rights granted to Third Parties to Commercialize each Terminated Product in any calendar quarter: Row A [**] [**] [**] Row B [**] [**] [**] Row C [**] [**] [**] [**]. Such payments shall be paid within forty (45) days after the end of each calendar quarter, and Sections 8.2 through 8.6 shall apply mutatis mutandis to such payments and for as long as each Terminated Product is being Developed, Manufactured, Finalized or Commercialized; (iv) The Parties shall in good faith draft and execute an agreement reflecting the terms of this Section 14.3(a) and, to the extent applicable, Section 14.3(b); and (v) Except as set forth in Section 10.2, the Continuing Party shall be solely responsible for any milestones, royalties and other payments payable to Third Parties following termination in consideration of a license(s) under such Third Party intellectual property rights in respect of the Development, Post Opt-In Development, Finalization or Commercialization of the Terminated Products, regardless of whether such payments are to be made with respect to intellectual property rights licensed (i) to the Continuing Party, other than as described in the following clauses (ii) and (iii); (ii) to the Non-Continuing Party and sublicensed to the Continuing Party hereunder (including pursuant to the [**] Agreement), provided that the Non-Continuing Party has provided a copy of the relevant Third Party license agreement to the Continuing Party; or (iii) to both Parties. If the Continuing Party wishes to discontinue making such payments pursuant to clauses (ii) or (iii), the Continuing Party shall provide written notice thereof to the Non-Continuing Party and the Continuing Party shall thereafter not be required to make such payments nor shall the Continuing Party be licensed under the relevant Third Party intellectual property rights. (vi) [**]. (b) Upon termination or expiration of this Agreement in its entirety for any reason, in addition to the provisions of Section 14.3(a): (i) each Receiving Party shall (A) promptly return to the Disclosing Party all materials and records in its possession or control containing Confidential Information of the Disclosing Party or, at the election of the Receiving Party, destroy such Confidential Information of the Disclosing Party, and (B) destroy: (1) any notes, reports or other documents prepared by the Receiving Party which contain Confidential Information of the Disclosing Party; and (2) any Confidential Information of the Disclosing Party (and all copies and reproductions thereof) which is in electronic form or cannot otherwise be returned to the Disclosing Party; provided, however, that (3) each Party may retain the Confidential Information of the other Party to the extent necessary to exercise its rights which survive termination or expiration, and (4) the Receiving Party may retain one (1) copy of the Disclosing Party’s Confidential Information in its archives solely to verify its compliance with its continuing obligations of confidentiality under this Agreement; (ii) the provisions of Sections 4.2(l)(to the extent the licenses granted under Section 7.1 continue in accordance with this Section 14.3), 4.2(m), 7.1(b)(last unenumerated paragraph only and to the extent the Continuing Party appoints Sublicensees), 7.2(a), 7.2(c), 8.1(c), 8.2-8.6, 9, 10, 11, 12.4, 13, 14.3, 14.4, 14.5, 15 and 16 shall survive in accordance with their terms and, to the extent required to give effect to such sections, the provisions of Section 1 and other Sections referred to in any of the foregoing shall survive.
Appears in 2 contracts
Sources: Development and Commercialization Agreement (Bioverativ Inc.), Development and Commercialization Agreement (Bioverativ Inc.)
Effects of Expiration or Termination. (a) Upon expiration or termination of this Agreement in its entirety for any reason, the following provisions shall apply:
(in which case a) subject to this Section 11.7 and Section 11.9, all Products are considered rights and licenses granted to be terminated), or upon non-election by Sobi pursuant to Sections 3.1(c)(i) or 3.1(c)(ii), or non-exercise by Sobi of its Opt-In Rights under Section 4.1(a), or upon termination with respect to a Product pursuant to Sections 14.2(a) or either Party hereunder shall terminate;
(b) (each Product that is so terminated if Angiotech terminates this Agreement pursuant to Section 7.5, 11.2, 11.4, 11.5 or for which Sobi does not exercise its Opt-In Right and any product containing a Compound Construct for which Sobi does not elect its rights under Sections 3.1(c) shall be a “Terminated Product”):11.6:
(i) The Orthovita shall promptly negotiate with Angiotech in good faith regarding commercially reasonable terms and conditions for the grant to Angiotech of rights and licenses granted (and sublicenses, if applicable), with a right to further sublicense, under intellectual property (including, without limitation, patents, patent applications, know-how, tangible materials, designs, molds, customer lists, vendor lists, data, manuals, schematics and Confidential Information) owned or Controlled by the Non-Continuing Party to the Continuing Party with respect to all Terminated Products shall remain in effect after such termination on a sublicenseable (provided that such sublicensees comply with the relevant provisions of this Agreement) basis and shall be converted to exclusive licenses Orthovita pertaining to (A) DevelopOrthovita Improvements that have been incorporated into the CoStasis Ingredients, Post Opt-In DevelopFormulated CoStasis Ingredients, Finalize and Commercialize the Terminated Products anywhere and/or Accessories which are being made, sold or offered for sale in the worldLicensed Field under this Agreement at the date of Angiotech’s termination notice, and (B) Manufacture the Terminated all CoStasis Ingredients, Formulated CoStasis Ingredients, Products anywhere in the world (whichand/or Accessories, if Sobi is the Non-Continuing Partyand all raw materials, shall be limited components or intermediates related to such rights under the Sobi Sole Collaboration IP and, only to the extent then (x) incorporated into or then being used in the Manufacture any of the applicable Terminated Product or (y) planned (as evidenced foregoing, that are not described by written documentation shared between the Parties prior to the date of termination) on being incorporated into, or being used in the Manufacture of, the applicable Terminated Product, other Sobi IP);
(ii) The Non-Continuing Party, with respect to the Terminated Products, preceding clause (A) shallwhich are being made, at the Non-Continuing Party’s expense, submit letter(s) sold or application(s) to the relevant Regulatory Authorities and take such other actions to transfer ownership of the Regulatory Filings and Regulatory Approvals in each country offered for sale in the Territory to the Continuing Party within thirty (30) days after receipt of the required documentation from the Continuing Party for inclusion in such letter(s) or application(s) (provided, that, if, at the time of termination (or such non-election or non-exercise), any clinical trials are being conducted by the Non-Continuing Party, such transfer may be delayed, in the Continuing Party’s reasonable discretion, to permit the Non-Continuing Party to complete such clinical trials, and the Non-Continuing Party shall complete such trials at the Continuing Party’s expense); (B) shall, at the Non-Continuing Party’s expense, immediately assign to the Continuing Party, all of its right, title and interest in and to all of its Sole Collaboration IP and other clinical, technical and other relevant reports, records, data and other tangible Information specifically relating to the Terminated Products (provided that the Non-Continuing Party may retain one (1) copy of such Information in its archives solely to verify its compliance with its continuing obligations of confidentiality Licensed Field under this Agreement); (C) shall, Agreement at the Non-Continuing Party’s expense, take appropriate steps with the relevant Regulatory Authorities to effect such assignments (to the extent permitted under applicable law); (D) shall, at the Non-Continuing Party’s expense, deliver to the Continuing Party one (1) copy of each physical embodiment of the items in clauses (A) and (B) in a mutually agreeable format promptly but in no event more than thirty (30) days after such termination (or such non-election or non-exercise); (E) hereby grants to the Continuing Party, subject to such termination (or such non-election or non-exercise), a royalty-bearing license, with the right to grant sublicenses, to use the foregoing to Develop, Manufacture, Finalize and Commercialize the Terminated Products anywhere in the world; (F) shall, at the Non-Continuing Party’s expense, (1) assign to the Continuing Party, promptly after such termination (or such non-election or non-exercise), but in any event no later than thirty (30) days after such termination (or such non-election or non-exercise), all of its right, title and interest in and to the Product Trademarks for the Terminated Products and all goodwill therein, and any domain name registrations incorporating the brand names for the Terminated Products; and (2) assist the Continuing Party in taking appropriate steps with the relevant governmental authorities or, with respect to domain name registrations, domain name registrars, to effect such assignment; (G) the provisions of Sections 7.3, 7.4, 7.6, 7.7, 7.8 and 7.9 shall apply; provided, that the rights granted to a Party in its role as the Non-Owning Party thereunder shall apply only if the Non-Owning Party is the Continuing Party;
(iii) The Non-Continuing Party shall assign to the Continuing Party any then-current Commercialization agreements with Third Parties (except as otherwise requested by the Continuing Party), the Continuing Party’s Territory shall be expanded to include all countries of the world, and the Continuing Party shall pay to the Non-Continuing Party, based on the date of which the Agreement is so terminated (or the date of such non-election termination notice, such that Angiotech and its Affiliates have all necessary rights and licenses under such intellectual property of Orthovita to manufacture (itself or non-exercisethrough Third Party(ies) contractually bound to Angiotech), (A) the percentage (listed use, distribute, promote, market, sell, offer for sale, export and import all CoStasis Ingredients, Formulated CoStasis Ingredients, Products or Accessories which are being made, sold or offered for sale in the following table) Licensed Field under this Agreement at the date of Net Sales by the Continuing Party or its Affiliates of each Terminated Product in each calendar quarter (provided, that, for purposes of this Section 14.3(a)(iii), sales made by Sublicensees of the Continuing Party shall not be considered in calculating Net Sales), and (B) the percentage (listed in the following table) of Sublicense Income or Net Partner Revenue received by the Continuing Party or its Affiliates with respect to rights granted to Third Parties to Commercialize each Terminated Product in any calendar quarter: Row A [**] [**] [**] Row B [**] [**] [**] Row C [**] [**] [**] [**]. Such payments shall be paid within forty (45) days after the end of each calendar quarter, and Sections 8.2 through 8.6 shall apply mutatis mutandis to such payments and for as long as each Terminated Product is being Developed, Manufactured, Finalized or Commercialized;
(iv) The Parties shall in good faith draft and execute an agreement reflecting the terms of this Section 14.3(a) and, to the extent applicable, Section 14.3(b)termination notice; and
(v) Except as set forth in Section 10.2, the Continuing Party shall be solely responsible for any milestones, royalties and other payments payable to Third Parties following termination in consideration of a license(s) under such Third Party intellectual property rights in respect of the Development, Post Opt-In Development, Finalization or Commercialization of the Terminated Products, regardless of whether such payments are to be made with respect to intellectual property rights licensed (i) to the Continuing Party, other than as described in the following clauses (ii) and (iii); (ii) to the Non-Continuing Party extent that Angiotech obtains such rights and sublicensed licenses described in clause (i) above, for a period of *** after the effective date of termination, Orthovita shall manufacture and supply to Angiotech all CoStasis Ingredients, Formulated CoStasis Ingredients, Products and Accessories which are being made, sold or offered for sale in the Continuing Party Licensed Field under this Agreement at the date of such termination notice, wherein Angiotech’s transfer price for such CoStasis Ingredients, Formulated CoStasis Ingredients, Products and Accessories shall be determined in accordance with the method(s) used hereunder to determine the transfer price for commercial supply of other products provided by Orthovita to Angiotech hereunder;
(c) upon expiration of this Agreement, Angiotech shall have an option to negotiate with Orthovita to obtain on commercially reasonable terms a license to intellectual *** Certain information in this exhibit has been omitted and will be filed separately with the Securities and Exchange Commission pursuant to a confidential treatment request under 17 C.F.R. Sections 200.80(b)(4) and 230.406. property owned or Controlled by Orthovita that is (i) related to CoStasis Ingredients, Formulated CoStasis Ingredients, Products or Accessories (including any Improvements to any of the foregoing), and (ii) existing as of the date of such expiration, such that Angiotech has all necessary and useful rights and licenses under such additional intellectual property of Orthovita to make, use, distribute, promote, market, sell, offer for sale, export and import CoStasis Ingredients, Formulated CoStasis Ingredients, Products or Accessories (including any Improvements to any of the foregoing) which are being made, sold or offered for sale in the Licensed Field under this Agreement at the date of such expiration; and
(d) if this Agreement expires or is terminated by Angiotech pursuant to the [Section 7.5, 11.2, 11.4, 11.5 or 11.6, Orthovita shall (i) **] Agreement)*, provided (ii) transfer to Angiotech advertising or promotional materials and training materials that were used in conjunction with the Non-Continuing Party has provided a copy of the relevant Third Party license agreement Products and Accessories prior to the Continuing Party; such expiration or termination, and (iii) to both Parties. If the Continuing Party wishes to discontinue making such payments pursuant to clauses (ii) or (iii), the Continuing Party shall provide written notice thereof to the Non-Continuing Party and the Continuing Party shall thereafter not be required to make such payments nor shall the Continuing Party be licensed under the relevant Third Party intellectual property rights.
(vi) [**]*.
(b) Upon termination or expiration of this Agreement in its entirety for any reason, in addition to the provisions of Section 14.3(a):
(i) each Receiving Party shall (A) promptly return to the Disclosing Party all materials and records in its possession or control containing Confidential Information of the Disclosing Party or, at the election of the Receiving Party, destroy such Confidential Information of the Disclosing Party, and (B) destroy: (1) any notes, reports or other documents prepared by the Receiving Party which contain Confidential Information of the Disclosing Party; and (2) any Confidential Information of the Disclosing Party (and all copies and reproductions thereof) which is in electronic form or cannot otherwise be returned to the Disclosing Party; provided, however, that (3) each Party may retain the Confidential Information of the other Party to the extent necessary to exercise its rights which survive termination or expiration, and (4) the Receiving Party may retain one (1) copy of the Disclosing Party’s Confidential Information in its archives solely to verify its compliance with its continuing obligations of confidentiality under this Agreement;
(ii) the provisions of Sections 4.2(l)(to the extent the licenses granted under Section 7.1 continue in accordance with this Section 14.3), 4.2(m), 7.1(b)(last unenumerated paragraph only and to the extent the Continuing Party appoints Sublicensees), 7.2(a), 7.2(c), 8.1(c), 8.2-8.6, 9, 10, 11, 12.4, 13, 14.3, 14.4, 14.5, 15 and 16 shall survive in accordance with their terms and, to the extent required to give effect to such sections, the provisions of Section 1 and other Sections referred to in any of the foregoing shall survive.
Appears in 2 contracts
Sources: License Agreement, License Agreement (Orthovita Inc)
Effects of Expiration or Termination. Upon expiration or termination of this Agreement:
(ai) Upon Except for the license granted to the BIO Parties under the Later Acquired Acutus Technology, which shall survive expiration or termination of this Agreement in accordance with its entirety (in which case all Products are considered to be terminated)terms, or upon non-election by Sobi pursuant to Sections 3.1(c)(i) or 3.1(c)(ii), or non-exercise by Sobi each of its Opt-In Rights the licenses under Section 4.1(a), or upon termination 2.1 and Section 2.2 in the Territory shall terminate;
(ii) Acutus shall cease its Development activities with respect to a products within the FS Product pursuant to Sections 14.2(a) or (b) (each Product that is so terminated or for which Sobi does not exercise Line as well as its Opt-In Right and any product containing a Compound Construct for which Sobi does not elect its rights under Sections 3.1(c) shall be a “Terminated Product”):
(i) The licenses granted by the Non-Continuing Party to the Continuing Party Commercialization activities with respect to products within the FS Product Line and any External Products used in connection therewith, in each case in the Field in the Territory;
(iii) Acutus shall cease to represent in any manner that Acutus Commercializes any products within the FS Product Line and any External Products used in connection therewith in the Territory;
(iv) Prior to the effective date of termination, the Parties shall negotiate in good faith a transition plan that sets forth a strategy, financial consideration, and estimated schedule for transition of the FS Product Line (and External Products used in connection therewith) to the BIO Parties in order to seek to minimize any disruption to the Development or Commercialization of such FS Product Line (and External Products used in connection therewith) as soon as reasonably practicable, including any assignment to the BIO Parties (or their designee), of any and all Terminated Products Regulatory Filings made with, and all Marketing Authorization Approvals obtained from, Regulatory Authorities in the Territory specifically relating to any products within the FS Product Line, in all cases, only to the extent such assignment is legally permissible, and to the extent such assignment is not legally permissible, to take such actions to make available to the BIO Parties (or their designee) the benefits of such Regulatory Filings and Marketing Authorization Approval;
(v) The Parties shall remain cooperate in effect after such termination on a sublicenseable (provided that such sublicensees comply with informing the relevant provisions Regulatory Authorities of this Agreementthe cessation of the applicable activities in relation to the FS Product Line and External Products in the Field in the Territory and use of Acutus’ Trademarks;
(vi) basis Acutus shall promptly provide to the BIO Parties, at no cost to the BIO Parties for items owned by the BIO Parties and shall be converted to exclusive licenses to at cost for items owned by Acutus, (A) Developany and all samples of any products within the FS Product Line and Promotional Materials of any kind, Post Opt-In Developincluding all literature, Finalize documents, and Commercialize the Terminated Products anywhere in the worldtraining and educational materials, and (B) Manufacture all Know-How, materials, and other Development Data specifically relating to any products within the Terminated Products anywhere FS Product Line, in the world (which, if Sobi is the Non-Continuing Party, shall be limited to such rights under the Sobi Sole Collaboration IP and, only each case to the extent then (x) incorporated into owned by the BIO Parties or then being used in the Manufacture agreed to be transferred pursuant to Section 13.3(b)(iv); provided, that Acutus shall be entitled to retain copies of the applicable Terminated Product or (y) planned (as evidenced by written documentation shared between the Parties prior to the date of termination) on being incorporated into, or being used in the Manufacture of, the applicable Terminated Product, other Sobi IP)such items for legal archival and regulatory purposes;
(iivii) The Non-Continuing Party, No Milestone achieved with respect to any product(s) within the Terminated Products, (A) shall, at FS Product Line after the Non-Continuing Party’s expense, submit letter(s) or application(s) to the relevant Regulatory Authorities and take such other actions to transfer ownership of the Regulatory Filings and Regulatory Approvals in each country in the Territory to the Continuing Party within thirty (30) days after receipt of the required documentation from the Continuing Party for inclusion in such letter(s) or application(s) (provided, that, if, at the time effective date of termination shall give rise to any Milestone Payments by Acutus;
(or such non-election or non-exercise)viii) In the event of termination by Acutus under Section 13.2, any clinical trials are being conducted by the Non-Continuing Party, such transfer may be delayed, in the Continuing Party’s reasonable discretion, to permit the Non-Continuing Party to complete such clinical trials, and the Non-Continuing Party Acutus shall complete such trials at the Continuing Party’s expense); (B) shall, at the Non-Continuing Party’s expense, immediately assign to the Continuing Party, all of its right, title and interest in and to all of its Sole Collaboration IP and other clinical, technical and other relevant reports, records, data and other tangible Information specifically relating to the Terminated Products (provided that the Non-Continuing Party may retain one (1) copy of such Information in its archives solely to verify its compliance with its continuing obligations of confidentiality under this Agreement); (C) shall, at the Non-Continuing Party’s expense, take appropriate steps with the relevant Regulatory Authorities to effect such assignments (to the extent permitted under applicable law); (D) shall, at the Non-Continuing Party’s expense, deliver to the Continuing Party one (1) copy of each physical embodiment of the items in clauses (A) and (B) in a mutually agreeable format promptly but in no event more than thirty (30) days after such termination (or such non-election or non-exercise); (E) hereby grants to the Continuing Party, subject to such termination (or such non-election or non-exercise), a royalty-bearing license, with have the right to grant sublicenses, continue to use sell its existing inventory of products within the foregoing to Develop, Manufacture, Finalize FS Product Line (including those still in production as of the effective date of such termination) and Commercialize the Terminated Products anywhere in the world; (F) shall, at the Non-Continuing Party’s expense, (1) assign to the Continuing Party, promptly after such termination (or such non-election or non-exercise), but in any event no later than thirty (30) days after such termination (or such non-election or non-exercise), all of its right, title and interest in and to the Product Trademarks for the Terminated Products and all goodwill therein, and any domain name registrations incorporating the brand names for the Terminated External Products; and (2) assist the Continuing Party in taking appropriate steps with the relevant governmental authorities or, with respect to domain name registrations, domain name registrars, to effect such assignment; (G) the provisions of Sections 7.3, 7.4, 7.6, 7.7, 7.8 and 7.9 shall apply; provided, that the rights granted BIO Parties shall continue to a Party receive payments with respect to such sales in its role as accordance with the Non-Owning Party thereunder shall apply only if ARTICLE 8 hereof. In the Non-Owning Party is the Continuing Party;
(iii) The Non-Continuing Party shall assign to the Continuing Party any then-current Commercialization agreements with Third Parties (except as otherwise requested event of termination by the Continuing Party)BIO Parties under Section 13.2, the Continuing Party’s Territory BIO Parties shall be expanded permitted to include all countries sell any existing inventory of such products within the FS Product Line (including those still in production as of the world, and the Continuing Party shall pay to the Non-Continuing Party, based on the date of which the Agreement is so terminated (or the effective date of such non-election termination) that contain Acutus’ name or non-exercise), (A) the percentage (listed in the following table) of Net Sales by the Continuing Party or its Affiliates of each Terminated Product in each calendar quarter (provided, that, for purposes of this Section 14.3(a)(iii), sales made by Sublicensees of the Continuing Party shall not be considered in calculating Net Sales), and (B) the percentage (listed in the following table) of Sublicense Income or Net Partner Revenue received by the Continuing Party or its Affiliates with respect to rights granted to Third Parties to Commercialize each Terminated Product in any calendar quarter: Row A [**] [**] [**] Row B [**] [**] [**] Row C [**] [**] [**] [**]. Such payments shall be paid within forty (45) days after the end of each calendar quarter, and Sections 8.2 through 8.6 shall apply mutatis mutandis to such payments and for as long as each Terminated Product is being Developed, Manufactured, Finalized or Commercialized;
(iv) The Parties shall in good faith draft and execute an agreement reflecting the terms of this Section 14.3(a) and, to the extent applicable, Section 14.3(b)Acutus’ Trademarks; and
(vix) Except as set forth in In the event of termination by Acutus under Section 10.213.2, the Continuing Party shall be solely responsible for any milestones, royalties and other payments payable to Third Parties following termination in consideration of a license(s) under such Third Party intellectual property rights in respect of the Development, Post Opt-In Development, Finalization or Commercialization of the Terminated Products, regardless of whether such payments are to be made with respect to intellectual property rights licensed (i) to the Continuing Party, other than as described in the following clauses (iiSections 2.1(d) and (iii); (ii) to the Non-Continuing Party and sublicensed to the Continuing Party hereunder (including pursuant to the [**] Agreement), provided that the Non-Continuing Party has provided a copy of the relevant Third Party license agreement to the Continuing Party; or (iii) to both Parties. If the Continuing Party wishes to discontinue making such payments pursuant to clauses (ii) or (iii), the Continuing Party shall provide written notice thereof to the Non-Continuing Party and the Continuing Party shall thereafter not be required to make such payments nor shall the Continuing Party be licensed under the relevant Third Party intellectual property rights.
(vi) [**].
(b) Upon termination or expiration of this Agreement in its entirety for any reason, in addition to the provisions of Section 14.3(a):
(i) each Receiving Party shall (A) promptly return to the Disclosing Party all materials and records in its possession or control containing Confidential Information of the Disclosing Party or, at the election of the Receiving Party, destroy such Confidential Information of the Disclosing Party, and (B) destroy: (1) any notes, reports or other documents prepared by the Receiving Party which contain Confidential Information of the Disclosing Party; and (2) any Confidential Information of the Disclosing Party (and all copies and reproductions thereof) which is in electronic form or cannot otherwise be returned to the Disclosing Party; provided, however, that (3) each Party may retain the Confidential Information of the other Party to the extent necessary to exercise its rights which survive termination or expiration, and (4) the Receiving Party may retain one (1) copy of the Disclosing Party’s Confidential Information in its archives solely to verify its compliance with its continuing obligations of confidentiality under this Agreement;
(ii) the provisions of Sections 4.2(l)(to the extent the licenses granted under Section 7.1 continue in accordance with this Section 14.3), 4.2(m), 7.1(b)(last unenumerated paragraph only and to the extent the Continuing Party appoints Sublicensees), 7.2(a), 7.2(c), 8.1(c), 8.2-8.6, 9, 10, 11, 12.4, 13, 14.3, 14.4, 14.5, 15 and 16 7.3 shall survive in accordance with their terms andthe agreement, but only as to Acutus’ Manufacturing obligations, to permit Acutus to supply the extent required to give effect to BIO Parties for a period of at least twenty-four (24) months following such sections, the provisions of Section 1 and other Sections referred to in any of the foregoing shall survivetermination.
Appears in 1 contract
Sources: License and Distribution Agreement (Acutus Medical, Inc.)
Effects of Expiration or Termination. (a) Upon expiration or termination of this Agreement in its entirety for any reason, the following provisions shall apply:
(in which case a) subject to this Section 11.7 and Section 11.9, all Products are considered rights and licenses granted to be terminated), or upon non-election by Sobi pursuant to Sections 3.1(c)(i) or 3.1(c)(ii), or non-exercise by Sobi of its Opt-In Rights under Section 4.1(a), or upon termination with respect to a Product pursuant to Sections 14.2(a) or either Party hereunder shall terminate;
(b) (each Product that if this Agreement is so terminated pursuant to Section 11.2 or for which Sobi does not exercise its Opt-In Right and any product containing a Compound Construct for which Sobi does not elect its rights under Sections 3.1(c) shall be a “Terminated Product”):Article 21:
(i) The Orthovita shall promptly negotiate with Angiotech in good faith regarding commercially reasonable terms and conditions for the grant to Angiotech of rights and licenses granted (and sublicenses, if applicable), with a right to further sublicense, under intellectual property (including, without limitation, patents, patent applications, know-how, tangible materials, designs, molds, customer lists, vendor lists, data, manuals, schematics and Confidential Information) owned or Controlled by the Non-Continuing Party to the Continuing Party with respect to all Terminated Products shall remain in effect after such termination on a sublicenseable (provided that such sublicensees comply with the relevant provisions of this Agreement) basis and shall be converted to exclusive licenses Orthovita pertaining to (A) DevelopOrthovita Improvements that have been incorporated into the CoStasis Ingredients, Post Opt-In DevelopFormulated CoStasis Ingredients, Finalize and Commercialize the Terminated Products anywhere and/or Accessories which are being made, sold or offered for sale in the worldLicensed Field under this Agreement at the date of Angiotech’s termination notice, and (B) Manufacture the Terminated all CoStasis Ingredients, Formulated CoStasis Ingredients, Products anywhere in the world (whichand/or Accessories, if Sobi is the Non-Continuing Partyand all raw materials, shall be limited components or intermediates related to such rights under the Sobi Sole Collaboration IP and, only to the extent then (x) incorporated into or then being used in the Manufacture any of the applicable Terminated Product or (y) planned (as evidenced foregoing, that are not described by written documentation shared between the Parties prior to the date of termination) on being incorporated into, or being used in the Manufacture of, the applicable Terminated Product, other Sobi IP);
(ii) The Non-Continuing Party, with respect to the Terminated Products, preceding clause (A) shallwhich are being made, at the Non-Continuing Party’s expense, submit letter(s) sold or application(s) to the relevant Regulatory Authorities and take such other actions to transfer ownership of the Regulatory Filings and Regulatory Approvals in each country offered for sale in the Territory to the Continuing Party within thirty (30) days after receipt of the required documentation from the Continuing Party for inclusion in such letter(s) or application(s) (provided, that, if, at the time of termination (or such non-election or non-exercise), any clinical trials are being conducted by the Non-Continuing Party, such transfer may be delayed, in the Continuing Party’s reasonable discretion, to permit the Non-Continuing Party to complete such clinical trials, and the Non-Continuing Party shall complete such trials at the Continuing Party’s expense); (B) shall, at the Non-Continuing Party’s expense, immediately assign to the Continuing Party, all of its right, title and interest in and to all of its Sole Collaboration IP and other clinical, technical and other relevant reports, records, data and other tangible Information specifically relating to the Terminated Products (provided that the Non-Continuing Party may retain one (1) copy of such Information in its archives solely to verify its compliance with its continuing obligations of confidentiality Licensed Field under this Agreement); (C) shall, Agreement at the Non-Continuing Party’s expense, take appropriate steps with the relevant Regulatory Authorities to effect such assignments (to the extent permitted under applicable law); (D) shall, at the Non-Continuing Party’s expense, deliver to the Continuing Party one (1) copy of each physical embodiment of the items in clauses (A) and (B) in a mutually agreeable format promptly but in no event more than thirty (30) days after such termination (or such non-election or non-exercise); (E) hereby grants to the Continuing Party, subject to such termination (or such non-election or non-exercise), a royalty-bearing license, with the right to grant sublicenses, to use the foregoing to Develop, Manufacture, Finalize and Commercialize the Terminated Products anywhere in the world; (F) shall, at the Non-Continuing Party’s expense, (1) assign to the Continuing Party, promptly after such termination (or such non-election or non-exercise), but in any event no later than thirty (30) days after such termination (or such non-election or non-exercise), all of its right, title and interest in and to the Product Trademarks for the Terminated Products and all goodwill therein, and any domain name registrations incorporating the brand names for the Terminated Products; and (2) assist the Continuing Party in taking appropriate steps with the relevant governmental authorities or, with respect to domain name registrations, domain name registrars, to effect such assignment; (G) the provisions of Sections 7.3, 7.4, 7.6, 7.7, 7.8 and 7.9 shall apply; provided, that the rights granted to a Party in its role as the Non-Owning Party thereunder shall apply only if the Non-Owning Party is the Continuing Party;
(iii) The Non-Continuing Party shall assign to the Continuing Party any then-current Commercialization agreements with Third Parties (except as otherwise requested by the Continuing Party), the Continuing Party’s Territory shall be expanded to include all countries of the world, and the Continuing Party shall pay to the Non-Continuing Party, based on the date of which the Agreement is so terminated (or the date of such non-election termination notice, such that Angiotech and its Affiliates have all necessary rights and licenses under such intellectual property of Orthovita to manufacture (itself or non-exercisethrough Third Party(ies) contractually bound to Angiotech), (A) the percentage (listed use, distribute, promote, market, sell, offer for sale, export and import all CoStasis Ingredients, Formulated CoStasis Ingredients, Products or Accessories which are being made, sold or offered for sale in the following table) Licensed Field under this Agreement at the date of Net Sales by the Continuing Party or its Affiliates of each Terminated Product in each calendar quarter (provided, that, for purposes of this Section 14.3(a)(iii), sales made by Sublicensees of the Continuing Party shall not be considered in calculating Net Sales), and (B) the percentage (listed in the following table) of Sublicense Income or Net Partner Revenue received by the Continuing Party or its Affiliates with respect to rights granted to Third Parties to Commercialize each Terminated Product in any calendar quarter: Row A [**] [**] [**] Row B [**] [**] [**] Row C [**] [**] [**] [**]. Such payments shall be paid within forty (45) days after the end of each calendar quarter, and Sections 8.2 through 8.6 shall apply mutatis mutandis to such payments and for as long as each Terminated Product is being Developed, Manufactured, Finalized or Commercialized;
(iv) The Parties shall in good faith draft and execute an agreement reflecting the terms of this Section 14.3(a) and, to the extent applicable, Section 14.3(b)termination notice; and
(v) Except as set forth in Section 10.2, the Continuing Party shall be solely responsible for any milestones, royalties and other payments payable to Third Parties following termination in consideration of a license(s) under such Third Party intellectual property rights in respect of the Development, Post Opt-In Development, Finalization or Commercialization of the Terminated Products, regardless of whether such payments are to be made with respect to intellectual property rights licensed (i) to the Continuing Party, other than as described in the following clauses (ii) and (iii); (ii) to the Non-Continuing Party extent that Angiotech obtains such rights and sublicensed licenses described in clause (i) above, for a period of *** after the effective date of termination, Orthovita shall manufacture and supply to Angiotech all CoStasis Ingredients, Formulated CoStasis Ingredients, Products and Accessories which are being made, sold or offered for sale in the Continuing Party Licensed Field under this Agreement at the date of such termination notice, wherein Angiotech’s transfer price for such CoStasis Ingredients, Formulated CoStasis Ingredients, Products and Accessories shall be determined in accordance with the method(s) used hereunder to determine the transfer price for commercial supply of other products provided by Orthovita to Angiotech hereunder;
(c) upon expiration of this Agreement, Angiotech shall have an option to negotiate with Orthovita to obtain on commercially reasonable terms a license to intellectual property owned or Controlled by Orthovita that is (i) related to CoStasis Ingredients, Formulated CoStasis Ingredients, Products or Accessories (including any Improvements to any of the foregoing), and (ii) existing as of the date of such expiration, such that Angiotech has all necessary and useful rights and licenses under such additional intellectual property of Orthovita to make, use, distribute, promote, market, sell, offer for sale, export and import CoStasis Ingredients, Formulated CoStasis Ingredients, Products or Accessories (including any Improvements to any of the foregoing) which are being made, sold or offered for sale in the Licensed Field under this Agreement at the date of such expiration; and
(d) if this Agreement expires or is terminated pursuant to the [Section 11.2 or Article 21, Orthovita shall **] Agreement)*, provided (ii) transfer to Angiotech advertising or promotional materials and training materials that were used in conjunction with the Non-Continuing Party has provided a copy of the relevant Third Party license agreement Products and Accessories prior to the Continuing Party; such expiration or termination, and (iii) to both Parties. If the Continuing Party wishes to discontinue making such payments pursuant to clauses (ii) or (iii), the Continuing Party shall provide written notice thereof to the Non-Continuing Party and the Continuing Party shall thereafter not be required to make such payments nor shall the Continuing Party be licensed under the relevant Third Party intellectual property rights.
(vi) [**].
(b) Upon termination or expiration of this Agreement in its entirety for any reason, in addition to the provisions of Section 14.3(a):
(i) each Receiving Party shall (A) promptly return to the Disclosing Party all materials and records in its possession or control containing Confidential Information of the Disclosing Party or, at the election of the Receiving Party, destroy such Confidential Information of the Disclosing Party, and (B) destroy: (1) any notes, reports or other documents prepared by the Receiving Party which contain Confidential Information of the Disclosing Party; and (2) any Confidential Information of the Disclosing Party (and all copies and reproductions thereof) which is in electronic form or cannot otherwise be returned to the Disclosing Party; provided, however, that (3) each Party may retain the Confidential Information of the other Party to the extent necessary to exercise its rights which survive termination or expiration, and (4) the Receiving Party may retain one (1) copy of the Disclosing Party’s Confidential Information in its archives solely to verify its compliance with its continuing obligations of confidentiality under this Agreement;
(ii) the provisions of Sections 4.2(l)(to the extent the licenses granted under Section 7.1 continue in accordance with this Section 14.3), 4.2(m), 7.1(b)(last unenumerated paragraph only and to the extent the Continuing Party appoints Sublicensees), 7.2(a), 7.2(c), 8.1(c), 8.2-8.6, 9, 10, 11, 12.4, 13, 14.3, 14.4, 14.5, 15 and 16 shall survive in accordance with their terms and, to the extent required to give effect to such sections, the provisions of Section 1 and other Sections referred to in any of the foregoing shall survive.*
Appears in 1 contract
Sources: License Agreement (Orthovita Inc)