Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7, or by Dimension pursuant to Section 9.6 shall be as follows: 9.9.1 The licenses and sublicenses granted by Dimension hereunder shall terminate, and Bayer, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that Bayer, its Affiliates, and Sublicensees, shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6; 9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension may elect not to have such sublicense assigned; and (ii) such assignment shall be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer to the Sublicensee that are not consistent with, or not required by, Dimension’s obligations to Bayer under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate; 9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7: (a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and (b) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indication. 9.9.4 If termination is by Bayer pursuant to Section 9.2: (a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
Appears in 4 contracts
Sources: Collaboration and License Agreement (Ultragenyx Pharmaceutical Inc.), Collaboration and License Agreement (Dimension Therapeutics, Inc.), Collaboration and License Agreement (Dimension Therapeutics, Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The Commercial Options and licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination;
6.6.2 If a Commercial Option has been exercised with respect to a Licensed Indication, Licensee shall assign to Licensor, and provided also that BayerLicensor shall accept, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses with respect to such Licensed Indication granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned, and Licensor will not be required to accept such sublicense; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.46.2, or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.76.5:
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees during the term of this Agreement, to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination ; provided that, if this Agreement is by Bayer pursuant terminated only with respect to a specific Licensed Indication, the foregoing license granted to Licensor will not apply to products for use in any Licensed Indication for which, and for so long as, the license granted under Section 9.2:2.1.4 continues or any indication for which, and for so long as, a license has been granted (and continues to be in effect) under the 2013 License Agreement;
(ab) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor an exclusive (even as to BayerLicensee), worldwide, […***…], transferable, perpetual, irrevocable perpetual license, with the right to grant sublicenses, under the Bayer Licensee Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of terminationProducts, solely in the Field (or, if this Agreement is terminated only with respect to a specific Licensed Indication, such Licensed Indication in the Field). For this purpose, the “Bayer Licensee Technology” means BayerLicensee’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions)How, or other intellectual property pertains to (i) a recombinant adeno-associated virus vector or (ii) any expression construct provided by Licensor to Licensee as part of the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of terminationTechnology. To effectuate such license, upon any such termination of this Agreement, Bayer Licensee will promptly disclose to Dimension Licensor all Bayer Licensee Technology not already known to Dimension;Licensor with respect to the Field or, if applicable, the Licensed Indication; and
Appears in 4 contracts
Sources: Option and License Agreement (Ultragenyx Pharmaceutical Inc.), Option and License Agreement (Dimension Therapeutics, Inc.), Option and License Agreement (Dimension Therapeutics, Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The Commercial Options and licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] * after the effective date of such termination;
6.6.2 If a Commercial Option has been exercised with respect to a Licensed Indication, Licensee shall assign to Licensor, and provided also that BayerLicensor shall accept, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses with respect to such Licensed Indication granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned, and Licensor will not be required to accept such sublicense; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.46.2, or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.76.5:
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]*, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees during the term of this Agreement, to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination ; provided that, if this Agreement is by Bayer pursuant terminated only with respect to a specific Licensed Indication, the foregoing license granted to Licensor will not apply to products for use in any Licensed Indication for which, and for so long as, the license granted under Section 9.2:2.1.4 continues or any indication for which, and for so long as, a license has ****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. been granted (and continues to be in effect) under the 2013 License Agreement;
(ab) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor an exclusive (even as to BayerLicensee), worldwide, […***…]*, transferable, perpetual, irrevocable perpetual license, with the right to grant sublicenses, under the Bayer Licensee Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of terminationProducts, solely in the Field (or, if this Agreement is terminated only with respect to a specific Licensed Indication, such Licensed Indication in the Field). For this purpose, the “Bayer Licensee Technology” means BayerLicensee’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions)How, or other intellectual property pertains to (i) a recombinant adeno-associated virus vector or (ii) any expression construct provided by Licensor to Licensee as part of the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of terminationTechnology. To effectuate such license, upon any such termination of this Agreement, Bayer Licensee will promptly disclose to Dimension Licensor all Bayer Licensee Technology not already known to Dimension;Licensor with respect to the Field or, if applicable, the Licensed Indication; and
Appears in 3 contracts
Sources: Option and License Agreement (REGENXBIO Inc.), Option and License Agreement (REGENXBIO Inc.), Option and License Agreement (REGENXBIO Inc.)
Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2Section 6.2, 9.3by Licensee pursuant to Section 6.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.4, or by Dimension Licensor pursuant to Section 9.6 6.5 or 6.6 shall be as follows:
9.9.1 6.7.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all AAV Materials or Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.7.2 Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. continuing to perform, Dimension Licensor may elect not to have such sublicense assigned, in which event such sublicense shall terminate; and (ii) such assignment Sublicensee must agree in writing to assume Licensee’s terms, conditions, and obligations to Licensor set forth in this Agreement, including all payment obligations; and (iii) following such assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor as provided in this Section 6.7.2 shall terminate;
9.9.3 6.7.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.3 or by Dimension Licensor pursuant to Section 9.56.4, 9.66.5, or 9.7:
(a) if6.6, at the time then, effective as of such terminationtermination of this Agreement, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed, during the term of this Agreement, by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension Licensor (and ReGenX its sublicensees) for the research, development, and commercialization of products in any therapeutic indication; provided that the categorization of patentable modifications or improvements that are subject to this Section 6.7.3 will be subject to the same exclusions applicable to “Licensed Back Improvements” under Sections 2.7.5 and 2.7.6.
9.9.4 6.7.4 Licensee shall pay all monies then-owed to Licensor under this Agreement;
6.7.5 Each Receiving Party shall, at the other Party’s request, return all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, one copy may be kept by either Party for a record of that Party’s obligations; and
6.7.6 If termination is by Bayer pursuant only with respect to a particular Disease Indication within the Research Field or the Commercial Field, but not all Disease Indications, then the provisions of this Section 9.2:
(a) Bayer 6.7 shall grantonly apply with respect to the terminated Disease Indications, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even Agreement shall continue as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, provided herein with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology respect to the extent such patents, Knownon-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;terminated Disease Indications.
Appears in 3 contracts
Sources: License Agreement (Voyager Therapeutics, Inc.), License Agreement (Voyager Therapeutics, Inc.), License Agreement (Voyager Therapeutics, Inc.)
Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2Section 6.2, 9.3by Licensee pursuant to Section 6.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.4, or by Dimension Licensor pursuant to Section 9.6 6.5 or 6.6 shall be as follows:
9.9.1 6.7.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all AAV Materials or Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.7.2 At Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 6.7.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.3 or by Dimension Licensor pursuant to Section 9.56.4, 9.66.5, or 9.7:
(a) if6.6, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee or any Affiliates (during the term of this Agreement) or by any Sublicensees (during the term of any sublicense agreement with such Sublicensee) to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 If termination is by Bayer pursuant 6.7.4 Licensee shall pay all monies then-owed to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of Licensor under this Agreement);
6.7.5 Each Receiving Party shall, to Dimension an exclusive (even as to Bayer)at the Disclosing Party’s request, worldwidereturn all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, […one copy may be kept by either Party for a record of that Party’s obligations; and ***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field*CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
Appears in 2 contracts
Sources: License Agreement (REGENXBIO Inc.), License Agreement (REGENXBIO Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that BayerLicensee, its Affiliates, and Sublicensees, shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.6.2 Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:6.5,
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:;
(ab) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor an exclusive (even as to BayerLicensee), worldwide, […***…], transferable, perpetual, irrevocable perpetual license, with the right to grant sublicenses, under the Bayer Licensee Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Licensee Technology” means BayerLicensee’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions)How, or other intellectual property pertains to (i) a recombinant adeno-associated virus vector or (ii) any expression construct provided by Licensor to Licensee as part of the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of terminationTechnology. To effectuate such license, upon any such termination of this Agreement, Bayer Licensee will promptly disclose to Dimension Licensor all Bayer Licensee Technology not already known to Dimension;Licensor; and
Appears in 2 contracts
Sources: License Agreement (Dimension Therapeutics, Inc.), License Agreement (Dimension Therapeutics, Inc.)
Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2Section 6.3, 9.3by Licensee pursuant to Section 6.4, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.5, or by Dimension Licensor pursuant to Section 9.6 6.6 or Section 6.7 shall be as follows; provided that for any termination with respect to a particular Disease Indication, then the following provisions shall apply only with respect to such Disease Indication:
9.9.1 6.8.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.8.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, Licensee and its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination;
6.8.2 If termination is by Licensor pursuant to Section 6.5, 6.6 or 6.7, then, at Licensor’s request, Licensee shall assign to Licensor, and provided also that BayerLicensor shall assume, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the SublicenseeSublicensee unless the Sublicensee notifies Licensor in writing that the Sublicensee does not wish such sublicense to be so assigned (in which case such sublicense shall terminate); provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and if termination is for any other reason, then all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 6.8.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.4 or by Dimension Licensor pursuant to Section 9.56.5, 9.66.6, or 9.7:
(a) if6.7, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license to under any Licensed Back Improvements, for use by Dimension and ReGenX Improvements for the research, development, and commercialization of products in any therapeutic indication;
6.8.4 Licensee shall pay all monies then-owed to Licensor under this Agreement; and
6.8.5 Each Receiving Party shall, at the Disclosing Party’s request, return all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, one copy may be kept by either Party for a record of that Party’s obligations.
9.9.4 6.8.6 If termination is by Bayer pursuant only with respect to a particular Disease Indication within the Commercial Field, but not all Disease Indications, then the provisions of this Section 9.2:
(a) Bayer 6.8 shall grantonly apply with respect to the terminated Disease Indications, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, Agreement shall continue with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology respect to the extent such patents, Knownon-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;terminated Disease Indications.
Appears in 2 contracts
Sources: License Agreement (Audentes Therapeutics, Inc.), License Agreement (Audentes Therapeutics, Inc.)
Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2Section 6.2, 9.3by Licensee pursuant to Section 6.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.4, or by Dimension Licensor pursuant to Section 9.6 6.5 or 6.6 shall be as follows:
9.9.1 6.7.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all AAV Materials or Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.7.2 Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned, in which event such sublicense shall terminate; and (ii) such assignment Sublicensee must agree in writing to assume Licensee’s terms, conditions, and obligations to Licensor set forth in this Agreement, including all payment obligations; and (iii) following such assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor as provided in this Section 6.7.2 shall terminate;
9.9.3 6.7.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.3 or by Dimension Licensor pursuant to Section 9.56.4, 9.66.5, or 9.7:
(a) if6.6, at the time then, effective as of such terminationtermination of this Agreement, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed, during the term of this Agreement, by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension Licensor (and ReGenX its sublicensees) for the research, development, and commercialization of products in any therapeutic indication; **** CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. provided that the categorization of patentable modifications or improvements that are subject to this Section 6.7.3 will be subject to the same exclusions applicable to “Licensed Back Improvements” under Sections 2.7.5 and 2.7.6.
9.9.4 6.7.4 Licensee shall pay all monies then-owed to Licensor under this Agreement;
6.7.5 Each Receiving Party shall, at the other Party’s request, return all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, one copy may be kept by either Party for a record of that Party’s obligations; and
6.7.6 If termination is by Bayer pursuant only with respect to a particular Disease Indication within the Research Field or the Commercial Field, but not all Disease Indications, then the provisions of this Section 9.2:
(a) Bayer 6.7 shall grantonly apply with respect to the terminated Disease Indications, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even Agreement shall continue as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, provided herein with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology respect to the extent such patents, Knownon-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;terminated Disease Indications.
Appears in 2 contracts
Sources: License Agreement (REGENXBIO Inc.), License Agreement (REGENXBIO Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows; provided that for any termination with respect to either the ALS Field or the RETT Field (and not both Fields), then the following provisions shall apply only with respect to such terminated Field:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that Bayer, its Affiliates, and Sublicensees, Licensee shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.6.2 If termination is by Licensor pursuant to Section 6.3, 6.4, or 6.5, then, at Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:
(a) if6.5, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 If termination is by Bayer pursuant 6.6.4 Licensee shall pay all monies then-owed to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of Licensor under this Agreement); and
6.6.5 Each Receiving Party shall, to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time Disclosing Party’s request, return all Confidential Information of terminationthe Disclosing Party. Notwithstanding the foregoing, solely in the Field. For this purpose, the “Bayer Technology” means Bayerone copy may be kept by either Party for a record of that Party’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;obligations.
Appears in 2 contracts
Sources: License Agreement, License Agreement (AveXis, Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, its Affiliates, and Sublicensees, Licensee shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.6.2 If termination is by Licensor pursuant to Section 6.3, 6.4, or 6.5, then, at Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any ****CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:
(a) if6.5, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 If termination is by Bayer pursuant 6.6.4 Licensee shall pay all monies then-owed to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of Licensor under this Agreement); and
6.6.5 Each Receiving Party shall, to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time Disclosing Party’s request, return all Confidential Information of terminationthe Disclosing Party. Notwithstanding the foregoing, solely in the Field. For this purpose, the “Bayer Technology” means Bayerone copy may be kept by either Party for a record of that Party’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;obligations.
Appears in 2 contracts
Sources: License Agreement (AveXis, Inc.), License Agreement (AveXis, Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and Bayer, Licensee and its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.2) all Sublicensees Affiliates shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, its Affiliates, and Sublicensees, Licensee shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all 6.6.2 All sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the SublicenseeSublicensee shall be assigned to Licensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:
(a) if6.5, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates (excluding any such modifications or improvements developed by a Third Party that acquired Licensee or its Affiliates, whether by merger, acquisition or assets sale, prior to the date of such acquisition), or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 6.6.4 Licensee shall pay all monies then-owed to Licensor under this Agreement; and
6.6.5 Each Receiving Party shall, at the other Party’s request, return all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, one copy may be kept by either Party for a record of that Party’s obligations. If termination is by Bayer pursuant only with respect to either the Pompe Field or the XLMTM Field, but not both, then the provisions of this Section 9.2:
(a) Bayer 6.6 shall grantonly apply with respect to the terminated Field, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, Agreement shall continue with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology respect to the extent such patents, Knownon-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;terminated Field.
Appears in 2 contracts
Sources: License Agreement (Audentes Therapeutics, Inc.), License Agreement (Audentes Therapeutics, Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and Bayer, Licensee and its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.2) all Sublicensees Affiliates shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, its Affiliates, and Sublicensees, Licensee shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all 6.6.2 All sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the SublicenseeSublicensee shall be assigned to Licensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indication*CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
Appears in 2 contracts
Sources: License Agreement (REGENXBIO Inc.), License Agreement (REGENXBIO Inc.)
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, its Affiliates, and Sublicensees, Licensee shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.6.2 If termination is by Licensor pursuant to Section 6.3, 6.4, or 6.5, then, at Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:
(a) if6.5, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 If termination is by Bayer pursuant 6.6.4 Licensee shall pay all monies then-owed to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of Licensor under this Agreement); and
6.6.5 Each Receiving Party shall, to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time Disclosing Party’s request, return all Confidential Information of terminationthe Disclosing Party. Notwithstanding the foregoing, solely in the Field. For this purpose, the “Bayer Technology” means Bayerone copy may be kept by either Party for a record of that Party’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;obligations.
Appears in 2 contracts
Sources: License Agreement (REGENXBIO Inc.), License Agreement (REGENXBIO Inc.)
Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7, or by Dimension pursuant to Section 9.6 6.2, 6.3, 6.4, 6.5, or 6.6 shall be as follows:
9.9.1 6.7.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, Affiliates and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees its and their sublicensees shall cease to make or use the AAV8 Materials and/or to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, its Affiliates, and Sublicensees, shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;*CERTAIN INFORMATION HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
9.9.2 Bayer shall have the right to assign to Dimension any 6.7.2 Any or all sublicenses granted to Third Parties related solely to the Licensed Patents or the Licensed Products shall survive this Agreement and be assigned to Licensor to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicenseesublicensee by Licensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension may elect not to have such sublicense assigned; and (ii) such assignment Licensor shall not be subject to Dimension not being liable to such Sublicensee sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, Dimension’s obligations sublicensee;
6.7.3 Licensee shall pay all monies then-owed to Bayer Licensor under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;and
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if6.7.4 Each Party shall, at the time of such terminationother Party’s request, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials return all Confidential Information of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer shall grantDisclosing Party. Notwithstanding the foregoing, and hereby grants (effective only upon any such termination one copy may be kept by either Party for a record of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indicationthat Party’s obligations.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
Appears in 1 contract
Sources: Licensing Agreement (REGENXBIO Inc.)
Effects of Termination. The effect effects of termination by Bayer Licensee pursuant to Sections 9.2Section 6.3, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7pursuant to Section 6.4, or by Dimension Licensor pursuant to Section 9.6 6.5 or 6.6 shall be as follows:
9.9.1 6.7.1 The applicable licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that BayerLicensee, its Affiliates, and Sublicensees, its Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products under the terminated licenses for a period not to exceed […***…] * * * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.7.2 If termination is by Licensor pursuant to Sections 6.4, 6.5 or 6.6, then, at Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 6.7.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.3 or by Dimension Licensor pursuant to Section 9.56.4, 9.66.5, or 9.7:
(a) if6.6, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer then Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license to under any Licensed Back Improvements, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 6.7.4 Licensee shall pay all monies then-owed to Licensor under this Agreement;
6.7.5 Each Receiving Party shall, at the Disclosing Party’s request, return all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, one copy may be kept by either Party for a record of that Party’s obligations; and
6.7.6 If termination is by Bayer pursuant only with respect to one or more Licensed Vectors within the Field, but not all Licensed Vectors, then the provisions of this Section 9.2:
(a) Bayer 6.7 shall grantonly apply with respect to the terminated Licensed Vectors, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, Agreement shall continue with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology respect to the extent such patents, Knownon-How (including all data and regulatory submissions), or other intellectual property pertains to the terminated Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;Vectors.
Appears in 1 contract
Effects of Termination. The effect effects of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The applicable licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyTechnology under the terminated licenses; provided that BayerLicensee, its Affiliates, and Sublicensees, its Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products under the terminated licenses for a period not to exceed […***…] * after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.6.2 If termination is by Licensor pursuant to Sections 6.3, 6.4 or 6.5, then, at Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:
(a) if6.5, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer then Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 If termination is by Bayer pursuant 6.6.4 Licensee shall pay all monies then-owed to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of Licensor under this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […; ***…], transferable, perpetual, irrevocable license, *Certain information has been omitted and filed separately with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the FieldCommission. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology Confidential treatment has been requested with respect to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;omitted portions.
Appears in 1 contract
Sources: License Agreement (REGENXBIO Inc.)
Effects of Termination. The effect In the event of any termination of this Agreement in its entirety or with respect to any given Product (a) by Bayer pursuant to Sections 9.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7, or by Dimension Servier for convenience pursuant to Section 9.6 12.2.3, (b) by Pieris for Servier’s material breach pursuant to Section 12.2.1 (without prejudice to any other remedies of Pieris, including the right to claim damages), (c) by Pieris for Servier’s insolvency pursuant to Section 12.2.4, or (d) by Servier, where it is dropping a Product pursuant to Section 5.2.1, the following terms shall apply:
(a) At Pieris’ request, Servier will return to Pieris or destroy (and certify such destruction to Pieris), at Pieris’ option, all Pieris’ Confidential Information related to the terminated Product(s) and Pieris Know-How related to the terminated Product(s) (provided that Servier shall be entitled to retain one (1) Confidential copy for archival and compliance purposes, and as follows:required by applicable Law or regulatory requirement);
9.9.1 The (b) Pieris shall have the right to acquire some or all of the inventory of the terminated Product, as requested by Pieris, in the possession of Servier and its Affiliates as of the date of such termination, provided that, if Pieris so acquires any or all such inventory, Pieris shall reimburse Servier the cost incurred by Servier for such inventory;
(a) All licenses and sublicenses granted by Dimension Pieris to Servier hereunder shall terminate, and Bayer, its Affiliates, and provided however that they will continue solely to enable Servier to (unless the sublicense agreement is assigned pursuant to Section 9.9.2i) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that Bayer, its Affiliates, and Sublicensees, shall have the right to continue to sell their existing inventories complete sales of Licensed GT Products for a period not any purchase orders that were in place prior to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension may elect not to have such sublicense assigned; termination and (ii) such assignment sell off any existing inventory of Products that Pieris does not purchase pursuant to Section 12.3.1.(b); thereafter, Servier will discontinue Commercialization of the applicable Product in the applicable countries.
(b) To the extent requested by Pieris, Servier shall enter into an agreement whereby Servier assigns its rights or grants an exclusive license to Pieris, under Servier IP that is used or necessary to further Develop, Manufacture and Commercialize the terminated Products, at the terms and conditions applicable to Dropped Products by Servier pursuant to Section 5.2.1.(c), including adequate indemnities to be subject to Dimension not being liable to such Sublicensee agreed upon; provided that, with respect to any obligations each such terminated Product, such Product will be deemed a “Dropped Product”, Servier will be deemed the “Dropping Party,” and the effective date of Bayer to the Sublicensee that are not consistent with, or not required by, Dimension’s obligations to Bayer termination under this Agreement; and all sublicenses not requested to Section will be assigned to Dimension shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if, at deemed the time of “Drop Date” for such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable LawsProduct; and
(bc) Bayer shall grantAt the request of Pieris, and hereby grants (effective only upon the Parties will discuss in good faith the wind-down of any such termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX ongoing Clinical Studies or Manufacturing campaigns for the research, development, and commercialization terminated Product(s) currently being conducted by or on behalf of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products Servier or any Licensed Treatments as they were being developed Pieris or Commercialized their Affiliates at the time of termination; provided that, solely absent such an agreement, such ongoing Clinical Studies or ongoing Manufacturing campaigns shall be continued (and funded or co-funded) for [***] following the notice of termination.
12.3.1. (d) Servier will, as promptly as practicable, and subject to Pieris’ reasonable assistance, to the extent legally permissible (including to the extent permitted under Servier’s obligations to Third Parties on the effective date of termination), (i) transfer and assign to Pieris or Pieris’ designee Servier’s right, title and interest in and to all material governmental or regulatory filings and approvals (including all Regulatory Approvals and pricing approvals, and Regulatory Materials, in all cases, specifically and exclusively relating to the Field. For this purposeDevelopment, Manufacture or Commercialization of the “Bayer Technology” means Bayer’s patentsterminated Products, and (ii) transfer to Pieris or Pieris’ designee copies of all material Data, Know-How, Clinical Study data and other intellectual property that are improvements or modifications to or that are based on or derived safety data in whole or in part from or that otherwise relate to any Licensed Technology Servier’s possession and Control to the extent specifically related to and required for the research, Development, Manufacture or Commercialization of the terminated Products. In addition, Servier will appoint Pieris as Servier’s and/or Servier’s Affiliates’ agent for all Confidential terminated Product-related matters involving Regulatory Authorities until all Regulatory Approvals and other regulatory filings hereunder have been assigned to Pieris or its designee. In the event of (x) failure to obtain assignment or (y) with respect to regulatory items that would otherwise fall within (i) and (ii) but for such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains materials not being specifically related to the Licensed GT terminated Products, but nonetheless which are necessary for the Development, Manufacture or Commercialization of the terminated Products or Licensed Treatments that were being developed or Commercialized by Bayer at above, in each of (x) and (y) Servier hereby consents and grants to Pieris the time right to access and reference (without any further action required on the part of termination. To effectuate such licenseServier, upon whose authorization to file this consent with any Regulatory Authority is hereby granted) any such termination of this Agreement, Bayer will promptly disclose item with respect to Dimension all Bayer Technology not already known to Dimension;terminated Products.
Appears in 1 contract
Sources: License and Collaboration Agreement (Pieris Pharmaceuticals, Inc.)
Effects of Termination. The effect of termination 8.6.1. If this Agreement is terminated by Bayer pursuant to Ironwood under Sections 9.28.2.1(a), 9.38.3 or 8.5, or 9.4 and by either PartyAstellas under Section 8.4, then the following provisions will be effective, but only for the country or countries for which such termination is effective (the “Relevant Countries”), as applicable, under Sections 9.5 or 9.7upon such termination (subject to, or by Dimension in the case of a termination pursuant to Section 9.6 8.5, any payments due under Section 8.5 having been made):
(a) All licenses granted by Ironwood to Astellas hereunder will automatically terminate for the Relevant Countries. [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission.
(b) All licenses granted by Astellas to Ironwood hereunder will become fully paid up, irrevocable, perpetual, royalty-free licenses for the Relevant Countries in the event of a termination pursuant to Sections 8.2.1(a), 8.3, or 8.4. In the event of a termination pursuant to Sections 8.2.1(b) or 8.5, such licenses shall be subject to such payments as follows:may be required as part of the determination of Fair Market Value.
9.9.1 The licenses (c) Astellas will (i) transfer to Ironwood all Regulatory Submissions and sublicenses granted by Dimension hereunder shall terminate, and Bayer, its Affiliates, and (unless Regulatory Approvals in the sublicense agreement is assigned pursuant Relevant Countries pertaining to Section 9.9.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; Compound or Product Controlled by Astellas, provided that Bayer, its Affiliates, and Sublicensees, Astellas shall have the right retain all rights relating thereto reasonably necessary for Astellas to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such terminationexercise its rights hereunder and Manufacture, Develop, and provided also Commercialize the Product in all countries in the Territory that Bayerare not Relevant Countries, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension may elect not to have such sublicense assigned; and (ii) assign to Ironwood all right, title, and interest in and to all of Astellas’s interest in any Trademark (including, without limitation, the goodwill symbolized by such assignment Trademark) exclusively used to brand the Product in the Relevant Countries.
(d) Astellas will grant to Ironwood an exclusive and fully sublicensable (only to an Ironwood licensee in connection with a license of rights in the Licensed Compound or Product) license, in the Relevant Countries, under the Astellas Technology and Astellas’s interest in the Joint Technology to Develop and Commercialize the Licensed Compound or the Product in an Oral Formulation in the Field. For the avoidance of doubt, the license in this Section 8.6.1(d) will not restrict Astellas from, and Astellas expressly retains all rights required for, conducting any research inside or outside of the Field anywhere in the world. The license pursuant to this Section 8.6.1(d) shall be fully paid up, irrevocable, perpetual, and royalty-free in the event of a termination pursuant to Sections 8.2.1(a), 8.3, or 8.4. In the event of a termination pursuant to or Sections 8.2.1(b) or 8.5, such licenses shall be subject to Dimension not being liable to such Sublicensee with respect to any obligations payments as may be required as part of Bayer to the Sublicensee that are not consistent with, or not required by, Dimension’s obligations to Bayer under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:determination of Fair Market Value.
(ae) ifAstellas will offer for sale to Ironwood all Development Material, Licensed Compound, and Product that it has in inventory at the time of such termination and that Astellas can or will not use in any countries in the Territory that are not Relevant Countries, which Ironwood may purchase from Astellas at the Transfer Price plus, for any finished Product, Astellas’s cost of finishing such Product,
(f) If termination is effective for the entire Territory, Astellas will furnish Ironwood with reasonable cooperation to assure a smooth transition of any clinical or other studies in progress related to the Licensed Compound or Product which Ironwood determines to continue in [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. compliance with Applicable Law and ethical guidelines applicable to the transfer or termination of any such studies.
(g) For the avoidance of doubt, until termination is effective, both Parties will continue to perform their obligations under this Agreement.
8.6.2. If this Agreement is terminated by Ironwood under Section 8.2.1(b), then the provisions of Section 8.6.1(a) through 8.6.1(g) will apply in connection with such termination, there are any ongoing clinical trials with respect subject to Licensed GT Products Ironwood paying to Astellas an amount equal to the Fair Market Value, which Fair Market Value shall be determined as described in the Field, the Parties shall, at DimensionSection 8.5.2(a) (and shall include Astellas’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials total documented expenditures on Development of the Licensed GT Products Compound and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer shall grant, and hereby grants (effective only upon any such termination the Product during the Term of this Agreement).
8.6.3. If Astellas terminates this Agreement pursuant to Sections 8.2.2 or 8.3, all licenses granted by Ironwood to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, developmentAstellas, and commercialization of products in any therapeutic indication.
9.9.4 If termination is all licenses granted by Bayer Astellas to Ironwood (together with all sublicenses granted by Ironwood pursuant to Section 9.2:
(a) Bayer shall grantsuch licenses), will terminate and hereby grants (effective only upon neither Party will have any such further liability to the other except to the extent of provisions which survive the termination of this Agreement), to Dimension an exclusive (even Agreement by their respective terms and obligations accrued but remaining outstanding as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with of the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time effectiveness of termination, solely in the Field.
8.6.4. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology Notwithstanding anything to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains contrary set forth in this Agreement but subject to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at limitations set forth in Section 9.5 and the time of termination. To effectuate such license, upon any such termination other applicable terms and conditions of this Agreement, Bayer termination pursuant to this Agreement on account of a default will promptly disclose not be deemed to Dimension all Bayer Technology not already known to Dimension;relieve a defaulting party from any liability under this Agreement on account of such default.
Appears in 1 contract
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:: *** Confidential Treatment Requested ***
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that BayerLicensee, its Affiliates, and Sublicensees, shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.6.2 Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:6.5,
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:;
(ab) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor an exclusive (even as to BayerLicensee), worldwide, […***…], transferable, perpetual, irrevocable perpetual license, with the right to grant sublicenses, under the Bayer Licensee Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Licensee Technology” means BayerLicensee’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions)How, or other intellectual property pertains to (i) a recombinant adeno-associated virus vector or (ii) any expression construct provided by Licensor to Licensee as part of the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of terminationTechnology. To effectuate such license, upon any such termination of this Agreement, Bayer Licensee will promptly disclose to Dimension Licensor all Bayer Licensee Technology not already known to Dimension;Licensor; and *** Confidential Treatment Requested ***
Appears in 1 contract
Effects of Termination. The effect effects of termination by Bayer Licensee pursuant to Sections 9.2Section 6.3, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.4, or by Dimension Licensor pursuant to Section 9.6 6.5 or 6.6 shall be as follows:
9.9.1 6.7.1 The applicable licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyTechnology under the terminated licenses; provided that Bayer, Licensee and its Affiliates, and Sublicensees, Affiliates shall have the right to continue to sell their its existing inventories of Licensed GT Products under the terminated licenses for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.7.2 If termination is by Licensor pursuant to Section 6.4, 6.5, or 6.6, then, at Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 6.7.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.3 or by Dimension Licensor pursuant to Section 9.56.4, 9.66.5, or 9.7:
(a) if6.6, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer then Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication;
6.7.4 Licensee shall pay all monies then-owed to Licensor under this Agreement; and
6.7.5 Each Receiving Party shall, at the Disclosing Party’s request, return all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, one copy may be kept by either Party for a record of that Party’s obligations.
9.9.4 If termination is by Bayer 6.7.6 For any Program Option terminated pursuant to Section 9.2:
(a) Bayer 6.2, within [*] of the effective date of such termination, Licensee shall grantprovide to Licensor copies of all patent applications, issued patents, and hereby grants (effective only upon data included in the license granted to Licensor under Section 6.2; provided that any such termination patent application that is unpublished will be the Confidential Information of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, Licensee and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology subject to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time terms of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;Article 5.
Appears in 1 contract
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The Commercial Options and licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination;
6.6.2 If a Commercial Option has been exercised with respect to a Licensed Indication, Licensee shall assign to Licensor, and provided also that BayerLicensor shall accept, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses with respect to such Licensed Indication granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned, and Licensor will not be required to accept such sublicense; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.46.2, or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.76.5:
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee, any Affiliates, or any Sublicensees during the term of this Agreement, to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination ; provided that, if this Agreement is by Bayer pursuant terminated only with respect to a specific Licensed Indication, the foregoing license granted to Licensor will not apply to products for use in any Licensed Indication for which, and for so long as, the license granted under Section 9.2:2.1.4 continues or any indication for which, and for so long as, a license has *** Confidential Treatment Requested *** been granted (and continues to be in effect) under the 2013 License Agreement;
(ab) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor an exclusive (even as to BayerLicensee), worldwide, […***…], transferable, perpetual, irrevocable perpetual license, with the right to grant sublicenses, under the Bayer Licensee Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of terminationProducts, solely in the Field (or, if this Agreement is terminated only with respect to a specific Licensed Indication, such Licensed Indication in the Field). For this purpose, the “Bayer Licensee Technology” means BayerLicensee’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions)How, or other intellectual property pertains to (i) a recombinant adeno-associated virus vector or (ii) any expression construct provided by Licensor to Licensee as part of the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of terminationTechnology. To effectuate such license, upon any such termination of this Agreement, Bayer Licensee will promptly disclose to Dimension Licensor all Bayer Licensee Technology not already known to Dimension;Licensor with respect to the Field or, if applicable, the Licensed Indication; and
Appears in 1 contract
Sources: Option and License Agreement
Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2Section 6.2, 9.3by Licensee pursuant to Section 6.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.4, or by Dimension Licensor pursuant to Section 9.6 6.5 or 6.6 shall be as follows; provided that for any termination with respect to a particular field in the Commercial Field, then the following provisions shall apply only with respect to such field:
9.9.1 6.7.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.7.2 At Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the SublicenseeSublicensee unless the Sublicensee notifies Licensor in writing that the Sublicensee does not wish such sublicense to be so assigned (in which case such sublicense shall terminate); provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
Appears in 1 contract
Effects of Termination. The effect In the event of any termination of this Agreement in its entirety or with respect to any given Product (a) by Bayer pursuant to Sections 9.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7, or by Dimension Servier for convenience pursuant to Section 9.6 12.2.3, (b) by Pieris for Servier’s material breach pursuant to Section 12.2.1 (without prejudice to any other remedies of Pieris, including the right to claim damages), (c) by Pieris for Servier’s insolvency pursuant to Section 12.2.4, or (d) by Servier, where it is dropping a Product pursuant to Section 5.2.1, the following terms shall apply:
(a) At Pieris’ request, Servier will return to Pieris or destroy (and certify such destruction to Pieris), at Pieris’ option, all Pieris’ Confidential Information related to the terminated Product(s) and Pieris Know-How related to the terminated Product(s) (provided that Servier shall be entitled to retain one (1) copy for archival and compliance purposes, and as follows:required by applicable Law or regulatory requirement);
9.9.1 The (b) Pieris shall have the right to acquire some or all of the inventory of the terminated Product, as requested by Pieris, in the possession of Servier and its Affiliates as of the date of such termination, provided that, if Pieris so acquires any or all such inventory, Pieris shall reimburse Servier the cost incurred by Servier for such inventory;
(c) All licenses and sublicenses granted by Dimension Pieris to Servier hereunder shall terminate, and Bayer, its Affiliates, and provided however that they will continue solely to enable Servier to (unless the sublicense agreement is assigned pursuant to Section 9.9.2i) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that Bayer, its Affiliates, and Sublicensees, shall have the right to continue to sell their existing inventories complete sales of Licensed GT Products for a period not any purchase orders that were in place prior to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension may elect not to have such sublicense assigned; termination and (ii) such assignment sell off any existing inventory of Products that Pieris does not purchase pursuant to Section 12.3.1.(b); thereafter, Servier will discontinue Commercialization of the applicable Product in the applicable countries.
12.3.1. (d) To the extent requested by Pieris, Servier shall enter into an agreement whereby Servier assigns its rights or grants an exclusive license to Pieris, under Servier IP that is used or necessary to further Develop, Manufacture and Commercialize the terminated Products, at the terms and conditions applicable to Dropped Products by Servier pursuant to Section 5.2.1.(c), including adequate indemnities to be subject to Dimension not being liable to such Sublicensee agreed upon; provided that, with respect to any obligations each such terminated Product, such Product will be deemed a “Dropped Product”, Servier will be deemed the “Dropping Party,” and the effective date of Bayer to the Sublicensee that are not consistent with, or not required by, Dimension’s obligations to Bayer termination under this Agreement; and all sublicenses not requested to Section will be assigned to Dimension shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if, at deemed the time of “Drop Date” for such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable LawsProduct; and
(b) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
Appears in 1 contract
Sources: License and Collaboration Agreement (Pieris Pharmaceuticals, Inc.)
Effects of Termination. The effect of termination by Bayer pursuant to Sections 9.2Section 6.2, 9.3by Licensee pursuant to Section 6.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.4, or by Dimension Licensor pursuant to Section 9.6 6.5 or 6.6 shall be as follows:
9.9.1 6.7.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.7.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all AAV Materials or Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that BayerLicensee, its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer 6.7.2 At Licensor’s request, Licensee shall have the right to assign to Dimension Licensor any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate;
9.9.3 6.7.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.3 or by Dimension Licensor pursuant to Section 9.56.4, 9.66.5, or 9.7:
(a) if6.6, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license under any patentable modifications or improvements (and any intellectual property rights with respect thereto) developed by Licensee or any Affiliates (during the term of this Agreement) or by any Sublicensees (during the term of any sublicense agreement with such Sublicensee) to any vector that is the subject of a claim within any of the Licensed Back ImprovementsPatents, for use by Dimension and ReGenX Licensor for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 6.7.4 Licensee shall pay all monies then-owed to Licensor under this Agreement;
6.7.5 Each Receiving Party shall, at the Disclosing Party’s request, return all Confidential Information of the Disclosing Party. Notwithstanding the foregoing, one copy may be kept by either Party for a record of that Party’s obligations; and
6.7.6 If termination is by Bayer pursuant only with respect to a particular Disease Indication within the Research Field or the Commercial Field, but not all Disease Indications, then the provisions of this Section 9.2:
(a) Bayer 6.7 shall grantonly apply with respect to the terminated Disease Indications, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, Agreement shall continue with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology respect to the extent such patents, Knownon-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;terminated Disease Indications.
Appears in 1 contract
Effects of Termination. The effect (a) If this Agreement is terminated in its entirety by XTL as a result of termination by Bayer pursuant to Sections 9.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7, or by Dimension PRESIDIO’s uncured material breach pursuant to Section 9.6 9.2 above, or on a territory-by-territory basis as a result of PRESIDIO’s uncured material breach of its diligence obligations with respect to a territory as described in Section 9.2(y) above, then the following provisions shall be as follows:applicable: * *****Confidential material redacted and filed separately with the Commission.
9.9.1 The licenses and sublicenses granted by Dimension hereunder shall terminate(i) In each of the above instances of a termination of this Agreement, and Bayer, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that Bayer, its Affiliates, and Sublicensees, XTL shall have the right to terminate the license granted by XTL to PRESIDIO under Section 2.1, subject to Section 9.6 below and, in the case of an uncured material breach by PRESIDIO of its diligence obligations which breach is limited to only one or two of the territories identified in Section 9.2(y), the termination shall be limited to such territory(ies); and
(ii) PRESIDIO shall return to XTL all Licensed Technology and other items delivered by XTL to PRESIDIO pursuant to Section 3.1, to the extent such Licensed Technology and other items remain in existence as of such termination; provided that PRESIDIO shall not be required to return the Licensed Technology or other items delivered by XTL to PRESIDIO pursuant to Section 3.1 if XTL terminates PRESIDIO’s rights hereunder only in regard to certain territories and not the entire Territory as provided in Section 9.2(y) above; and
(iii) PRESIDIO shall not, directly or with or through its Affiliates, and subject to Section 9.6 below, Third Party sublicensees or other Third Parties, continue to sell their existing inventories the Commercialization of any Licensed GT Compounds or Licensed Products for a period not to exceed […of ***…] after the effective date of ** following such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right such restriction to continue to supply Licensed GT Products or support any Licensed Treatment apply to the extent required by any Regulatory Authority, but in each case subject entire Territory if XTL terminates the Agreement pursuant to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunderSection 9.2, and, if such Sublicensee termination is not in full compliance or is not continuing only applicable to performcertain territories, Dimension may elect not to have then such sublicense assigned; and (ii) such assignment restriction shall be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer apply only to the Sublicensee territories to which such termination applies; provided that are not consistent with, or not required by, Dimension’s obligations to Bayer under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if, at the time of such termination, there are PRESIDIO and/or any ongoing clinical trials of its Affiliates and/or Third Party sublicensees is engaged in the Commercialization of Licensed Products and has commercial inventory (including work-in-process inventory) of Licensed Products, PRESIDIO and/or such Affiliate(s) and/or Third Party sublicensee(s) may complete the manufacture of any work-in-process inventory and continue to commercially distribute and sell all such existing inventory following termination, subject to PRESIDIO continuing to pay XTL all amounts due under this Agreement with respect to Licensed GT Products in such continuing Commercialization.
(b) If this Agreement is terminated by PRESIDIO pursuant to Section 9.3, then the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan following provisions shall be applicable:
(i) The license granted by XTL to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable LawsPRESIDIO under Section 2.1 shall terminate; and
(bii) Bayer PRESIDIO shall grantreturn to XTL all Licensed Technology and other items delivered by XTL to PRESIDIO pursuant to Section 3.1, to the extent such Licensed Technology and hereby grants other items remain in existence as of such termination; and
(effective only upon iii) PRESIDIO shall not, directly or with or through its Affiliates, Third Party sublicensees or other Third Parties, continue the Development and Commercialization of any Licensed Compounds or Licensed Products for a period of ***** following such termination.
(c) If this Agreement is terminated by PRESIDIO as described in Section 9.4(a)(i), then the following provisions shall be applicable: * *****Confidential material redacted and filed separately with the Commission.
(i) The license granted by XTL to PRESIDIO under Section 2.1 shall terminate; and
(ii) PRESIDIO shall return to XTL all Licensed Technology and other items delivered by XTL to PRESIDIO pursuant to Section 3.1, to the extent such Licensed Technology and other items remain in existence as of such termination; and
(iii) PRESIDIO shall not, directly or with or through its Affiliates, Third Party sublicensees or other Third Parties, continue the Commercialization of any Licensed Compounds or Licensed Products for a period of ***** following such termination.
(d) The license termination and other rights set forth in this Section 9.5 shall, subject to Section 4.2, be in addition to any and all other remedies that XTL may have in connection with such a termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
Appears in 1 contract
Effects of Termination. The effect of termination 8.6.1. If this Agreement is terminated by Bayer pursuant to Ironwood under Sections 9.28.2.1(a), 9.38.3 or 8.5, or 9.4 and by either PartyAstellas under Section 8.4, then the following provisions will be effective, but only for the country or countries for which such termination is effective (the “Relevant Countries”), as applicable, under Sections 9.5 or 9.7upon such termination (subject to, or by Dimension in the case of a termination pursuant to Section 9.6 8.5, any payments due under Section 8.5 having been made):
(a) All licenses granted by Ironwood to Astellas hereunder will automatically terminate for the Relevant Countries. [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission.
(b) All licenses granted by Astellas to Ironwood hereunder will become fully paid up, irrevocable, perpetual, royaltyfree licenses for the Relevant Countries in the event of a termination pursuant to Sections 8.2.1(a), 8.3, or 8.4. In the event of a termination pursuant to Sections 8.2.1(b) or 8.5, such licenses shall be subject to such payments as follows:may be required as part of the determination of Fair Market Value.
9.9.1 The licenses (c) Astellas will (i) transfer to Ironwood all Regulatory Submissions and sublicenses granted by Dimension hereunder shall terminate, and Bayer, its Affiliates, and (unless Regulatory Approvals in the sublicense agreement is assigned pursuant Relevant Countries pertaining to Section 9.9.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; Compound or Product Controlled by Astellas, provided that Bayer, its Affiliates, and Sublicensees, Astellas shall have the right retain all rights relating thereto reasonably necessary for Astellas to continue to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such terminationexercise its rights hereunder and Manufacture, Develop, and provided also Commercialize the Product in all countries in the Territory that Bayerare not Relevant Countries, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension may elect not to have such sublicense assigned; and (ii) assign to Ironwood all right, title, and interest in and to all of Astellas’s interest in any Trademark (including, without limitation, the goodwill symbolized by such assignment Trademark) exclusively used to brand the Product in the Relevant Countries.
(d) Astellas will grant to Ironwood an exclusive and fully sublicensable (only to an Ironwood licensee in connection with a license of rights in the Licensed Compound or Product) license, in the Relevant Countries, under the Astellas Technology and Astellas’s interest in the Joint Technology to Develop and Commercialize the Licensed Compound or the Product in an Oral Formulation in the Field. For the avoidance of doubt, the license in this Section 8.6.1(d) will not restrict Astellas from, and Astellas expressly retains all rights required for, conducting any research inside or outside of the Field anywhere in the world. The license pursuant to this Section 8.6.1(d) shall be fully paid up, irrevocable, perpetual, and royaltyfree in the event of a termination pursuant to Sections 8.2.1(a), 8.3, or 8.4. In the event of a termination pursuant to or Sections 8.2.1(b) or 8.5, such licenses shall be subject to Dimension not being liable to such Sublicensee with respect to any obligations payments as may be required as part of Bayer to the Sublicensee that are not consistent with, or not required by, Dimension’s obligations to Bayer under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:determination of Fair Market Value.
(ae) ifAstellas will offer for sale to Ironwood all Development Material, Licensed Compound, and Product that it has in inventory at the time of such termination and that Astellas can or will not use in any countries in the Territory that are not Relevant Countries, which Ironwood may purchase from Astellas at the Transfer Price plus, for any finished Product, Astellas’s cost of finishing such Product,
(f) If termination is effective for the entire Territory, Astellas will furnish Ironwood with reasonable cooperation to assure a smooth transition of any clinical or other studies in progress related to the Licensed Compound or Product which Ironwood determines to continue in [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. compliance with Applicable Law and ethical guidelines applicable to the transfer or termination of any such studies.
(g) For the avoidance of doubt, until termination is effective, both Parties will continue to perform their obligations under this Agreement.
8.6.2. If this Agreement is terminated by Ironwood under Section 8.2.1(b), then the provisions of Section 8.6.1(a) through 8.6.1(g) will apply in connection with such termination, there are any ongoing clinical trials with respect subject to Licensed GT Products Ironwood paying to Astellas an amount equal to the Fair Market Value, which Fair Market Value shall be determined as described in the Field, the Parties shall, at DimensionSection 8.5.2(a) (and shall include Astellas’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials total documented expenditures on Development of the Licensed GT Products Compound and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer shall grant, and hereby grants (effective only upon any such termination the Product during the Term of this Agreement).
8.6.3. If Astellas terminates this Agreement pursuant to Sections 8.2.2 or 8.3, all licenses granted by Ironwood to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, developmentAstellas, and commercialization of products in any therapeutic indication.
9.9.4 If termination is all licenses granted by Bayer Astellas to Ironwood (together with all sublicenses granted by Ironwood pursuant to Section 9.2:
(a) Bayer shall grantsuch licenses), will terminate and hereby grants (effective only upon neither Party will have any such further liability to the other except to the extent of provisions which survive the termination of this Agreement), to Dimension an exclusive (even Agreement by their respective terms and obligations accrued but remaining outstanding as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with of the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time effectiveness of termination, solely in the Field.
8.6.4. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology Notwithstanding anything to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains contrary set forth in this Agreement but subject to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at limitations set forth in Section 9.5 and the time of termination. To effectuate such license, upon any such termination other applicable terms and conditions of this Agreement, Bayer termination pursuant to this Agreement on account of a default will promptly disclose not be deemed to Dimension all Bayer Technology not already known to Dimension;relieve a defaulting party from any liability under this Agreement on account of such default.
Appears in 1 contract
Sources: License Agreement
Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, Licensee and its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination;
6.6.2 If termination is by Licensor pursuant to Section 6.3, 6.4, or 6.5, then, at Licensor’s request, Licensee shall assign to Licensor, and provided also that BayerLicensor shall assume, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the SublicenseeSublicensee (unless the Sublicensee notifies Licensor in writing that the Sublicensee does not wish such sublicense to be so assigned (in which case such sublicense shall terminate); provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
Appears in 1 contract
Sources: License Agreement
Effects of Termination. The effect All of the following effects of termination are in addition to the other rights and remedies that may be available to either of the Parties under this Agreement and shall not be construed to limit any such rights or remedies.
(a) In the event that this Agreement is terminated by Bayer Vyera in accordance with Section 9.2, Section 9.4 or Section 9.5, Vyera shall (in its discretion) either: (i) keep any or all outstanding Firm Orders in place (on a Firm Order-by-Firm Order basis as determined by Vyera), in which case CytoDyn shall Manufacture and Deliver, in accordance with this Agreement, all quantities of Products ordered pursuant to Sections 9.2such Firm Orders (regardless of whether the Delivery Date for such Products is before or after such termination) and Vyera shall pay the Supply Price with respect to such Products which meet the representations, 9.3, warranties and covenants set forth in this Agreement; or 9.4 and (ii) cancel any or all outstanding Firm Orders (on a Firm Order-by-Firm Order basis as determined by either Party, as applicable, under Sections 9.5 or 9.7, or by Dimension pursuant to Section 9.6 shall be as follows:
9.9.1 The licenses and sublicenses granted by Dimension hereunder shall terminateVyera), and Bayerwith respect to any such cancelled Firm Orders, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.2) all Sublicensees Vyera shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technologyno further liability with respect thereto; provided that Bayer, its Affiliates, and Sublicensees, Vyera shall only have the right to continue cancel Firm Orders pursuant to sell their existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension may elect not to have such sublicense assigned; and this clause (ii) such assignment shall be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer to the Sublicensee that are not consistent with, or not required by, Dimension’s obligations to Bayer under if this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 If termination Agreement is terminated by Bayer Vyera pursuant to Section 9.2, 9.3 9.2 or Section 9.4, or .
(b) In the event that this Agreement is terminated by Dimension CytoDyn pursuant to Section 9.59.2 or by Vyera pursuant to Section 9.4 or Section 9.3 (second sentence), 9.6, or 9.7:
(a) if, at Vyera shall purchase the quantity of Safety Stock of Product existing as of the time of such terminationtermination (if any) that is in finished, there are any ongoing clinical trials with respect to Licensed GT Products packaged and labelled form (provided that all such Product meets the representations, warranties and covenants set forth in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension a non-exclusiveand in connection therewith, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, developmentCytoDyn shall Deliver all such quantities of Safety Stock in accordance with this Agreement, and commercialization Vyera shall pay the applicable Supply Price with respect to such Product. Notwithstanding the foregoing or anything to the contrary contained herein, from and after the delivery of products in any therapeutic indicationnotice of termination pursuant to this Agreement, CytoDyn shall not replenish (or otherwise add any additional quantities of Product to) any Safety Stock then being held for Vyera.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(ac) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products Upon expiration or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose Vyera and CytoDyn shall immediately settle all outstanding invoices and other monies owed to Dimension all Bayer Technology the other pursuant to this Agreement. The termination or expiration of this Agreement shall not already known affect the rights and obligations of the Parties accruing prior to Dimension;such termination or expiration. Subject to the foregoing, expiration or termination of this Agreement shall relieve and release the Parties from any liabilities and obligations under this Agreement, other than those specifically set forth in this Article 9 and those that survive termination in accordance with Section 9.8.
Appears in 1 contract
Sources: Supply Agreement (CytoDyn Inc.)
Effects of Termination. The effect (a) If this Agreement is terminated in its entirety by XTL as a result of termination by Bayer pursuant to Sections 9.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7, or by Dimension PRESIDIO’s uncured material breach pursuant to Section 9.6 9.2 above, or on a territory-by-territory basis as a result of PRESIDIO’s uncured material breach of its diligence obligations with respect to a territory as described in Section 9.2(y) above, then the following provisions shall be as followsapplicable:
9.9.1 The licenses and sublicenses granted by Dimension hereunder shall terminate(i) In each of the above instances of a termination of this Agreement, and Bayer, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed Technology; provided that Bayer, its Affiliates, and Sublicensees, XTL shall have the right to terminate the license granted by XTL to PRESIDIO under Section 2.1, subject to Section 9.6 below and, in the case of an uncured material breach by PRESIDIO of its diligence obligations which breach is limited to only one or two of the territories identified in Section 9.2(y), the termination shall be limited to such territory(ies); and
(ii) PRESIDIO shall return to XTL all Licensed Technology and other items delivered by XTL to PRESIDIO pursuant to Section 3.1, to the extent such Licensed Technology and other items remain in existence as of such termination; provided that PRESIDIO shall not be required to return the Licensed Technology or other items delivered by XTL to PRESIDIO pursuant to Section 3.1 if XTL terminates PRESIDIO’s rights hereunder only in regard to certain territories and not the entire Territory as provided in Section 9.2(y) above; and
(iii) PRESIDIO shall not, directly or with or through its Affiliates, and subject to Section 9.6 below, Third Party sublicensees or other Third Parties, continue to sell their existing inventories the Commercialization of any Licensed GT Compounds or Licensed Products for a period not to exceed […of ***…] after the effective date of ** following such termination, and provided also that Bayer, its Affiliates and Sublicensees shall have the right such restriction to continue to supply Licensed GT Products or support any Licensed Treatment apply to the extent required by any Regulatory Authority, but in each case subject entire Territory if XTL terminates the Agreement pursuant to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer hereunder and sublicensed to the Sublicensee; provided that (i) prior to such assignment, Bayer shall advise Dimension whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunderSection 9.2, and, if such Sublicensee termination is not in full compliance or is not continuing only applicable to performcertain territories, Dimension may elect not to have then such sublicense assigned; and (ii) such assignment restriction shall be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer apply only to the Sublicensee territories to which such termination applies; provided that are not consistent with, or not required by, Dimension’s obligations to Bayer under this Agreement; and all sublicenses not requested to be assigned to Dimension shall terminate;
9.9.3 If termination is by Bayer pursuant to Section 9.2, 9.3 or 9.4, or by Dimension pursuant to Section 9.5, 9.6, or 9.7:
(a) if, at the time of such termination, there are PRESIDIO and/or any ongoing clinical trials of its Affiliates and/or Third Party sublicensees is engaged in the Commercialization of Licensed Products and has commercial inventory (including work-in-process inventory) of Licensed Products, PRESIDIO and/or such Affiliate(s) and/or Third Party sublicensee(s) may complete the manufacture of any work-in-process inventory and continue to commercially distribute and sell all such existing inventory following termination, subject to PRESIDIO continuing to pay XTL all amounts due under this Agreement with respect to Licensed GT Products in such continuing Commercialization.
(b) If this Agreement is terminated by PRESIDIO pursuant to Section 9.3, then the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan following provisions shall be applicable:
(i) The license granted by XTL to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable LawsPRESIDIO under Section 2.1 shall terminate; and
(bii) Bayer PRESIDIO shall grantreturn to XTL all Licensed Technology and other items delivered by XTL to PRESIDIO pursuant to Section 3.1, to the extent such Licensed Technology and hereby grants other items remain in existence as of such termination; and
(effective only upon iii) PRESIDIO shall not, directly or with or through its Affiliates, Third Party sublicensees or other Third Parties, continue the Development and Commercialization of any Licensed Compounds or Licensed Products for a period of ***** following such termination.
(c) If this Agreement is terminated by PRESIDIO as described in Section 9.4(a)(i), then the following provisions shall be applicable:
(i) The license granted by XTL to PRESIDIO under Section 2.1 shall terminate; and
(ii) PRESIDIO shall return to XTL all Licensed Technology and other items delivered by XTL to PRESIDIO pursuant to Section 3.1, to the extent such Licensed Technology and other items remain in existence as of such termination; and
(iii) PRESIDIO shall not, directly or with or through its Affiliates, Third Party sublicensees or other Third Parties, continue the Commercialization of any Licensed Compounds or Licensed Products for a period of ***** following such termination.
(d) The license termination and other rights set forth in this Section 9.5 shall, subject to Section 4.2, be in addition to any and all other remedies that XTL may have in connection with such a termination of this Agreement), to Dimension a non-exclusive, perpetual, irrevocable, worldwide, […***…], transferable, sublicensable license to any Licensed Back Improvements, for use by Dimension and ReGenX for the research, development, and commercialization of products in any therapeutic indication.
9.9.4 If termination is by Bayer pursuant to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of this Agreement), to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time of termination, solely in the Field. For this purpose, the “Bayer Technology” means Bayer’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;
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Effects of Termination. The effect of termination by Bayer Licensee pursuant to Sections 9.2Section 6.2, 9.3, or 9.4 and by either Party, as applicable, under Sections 9.5 or 9.7Section 6.3, or by Dimension Licensor pursuant to Section 9.6 6.4 or 6.5 shall be as follows:
9.9.1 6.6.1 The licenses and sublicenses granted by Dimension Licensor hereunder shall terminate, and BayerLicensee, its Affiliates, and (unless the sublicense agreement is assigned pursuant to Section 9.9.26.6.2) all Sublicensees shall cease to make, have made, use, import, sell, and offer for sale all Licensed GT Products and shall cease to otherwise practice the Licensed TechnologyPatents; provided that Bayer, Licensee and its Affiliates, and Sublicensees, Sublicensees shall have the right to continue to sell their its existing inventories of Licensed GT Products for a period not to exceed […***…] after the effective date of such termination;
6.6.2 If termination is by Licensor pursuant to Section 6.3, 6.4, or 6.5, then, at Licensor’s request, Licensee shall assign to Licensor, and provided also that BayerLicensor shall assume, its Affiliates and Sublicensees shall have the right to continue to supply Licensed GT Products or support any Licensed Treatment to the extent required by any Regulatory Authority, but in each case subject to any payment obligations to Dimension under Article 6;
9.9.2 Bayer shall have the right to assign to Dimension any or all sublicenses granted to Third Parties to the extent of the rights licensed to Bayer Licensee hereunder and sublicensed to the SublicenseeSublicensee (unless the Sublicensee notifies Licensor in writing that the Sublicensee does not wish such sublicense to be so assigned (in which case such sublicense shall terminate); provided that (i) prior to such assignment, Bayer Licensee shall advise Dimension Licensor whether such Sublicensee is then in full compliance with all terms and conditions of its sublicense and continues to perform thereunder, and, if such Sublicensee is not in full compliance or is not continuing to perform, Dimension Licensor may elect not to have such sublicense assigned; and (ii) following such assignment assignment, Licensor shall not be subject to Dimension not being liable to such Sublicensee with respect to any obligations of Bayer Licensee to the Sublicensee that are not consistent with, or not required by, DimensionLicensor’s obligations to Bayer Licensee under this Agreement; and all sublicenses not requested to be assigned to Dimension Licensor shall terminate. If termination is for any other reason, then all sublicenses shall terminate;
9.9.3 6.6.3 If termination is by Bayer Licensee pursuant to Section 9.2, 9.3 or 9.4, 6.2 or by Dimension Licensor pursuant to Section 9.56.3, 9.66.4, or 9.7:
(a) if6.5, at the time of such termination, there are any ongoing clinical trials with respect to Licensed GT Products in the Field, the Parties shall, at Dimension’s option, negotiate in good faith and adopt a plan to wind-down such trial activities in an orderly fashion or, at Dimension’s election, promptly transition such development activities to Dimension or its designee, with due regard for patient safety and the rights of any subjects that are participants in any clinical trials of the Licensed GT Products and take any actions Dimension deems reasonably necessary or appropriate to avoid any human health or safety problems and in compliance with all applicable Laws; and
(b) Bayer Licensee shall grant, and hereby grants (effective only upon any such termination of this Agreement)grants, to Dimension Licensor a non-exclusive, perpetual, irrevocable, worldwide, […***…]royalty-free, transferable, sublicensable license to under any Licensed Back Improvements, for use by Dimension and ReGenX Improvements for the research, development, and commercialization of products in any therapeutic indication.;
9.9.4 If termination is by Bayer pursuant 6.6.4 Licensee shall pay all monies then-owed to Section 9.2:
(a) Bayer shall grant, and hereby grants (effective only upon any such termination of Licensor under this Agreement); and
6.6.5 Each Receiving Party shall, to Dimension an exclusive (even as to Bayer), worldwide, […***…], transferable, perpetual, irrevocable license, with the right to grant sublicenses, under the Bayer Technology to make, have made, use, import, sell, and offer for sale the Licensed GT Products or any Licensed Treatments as they were being developed or Commercialized at the time Disclosing Party’s request, return all Confidential Information of terminationthe Disclosing Party. Notwithstanding the foregoing, solely in the Field. For this purpose, the “Bayer Technology” means Bayerone copy may be kept by either Party for a record of that Party’s patents, Know-How, and other intellectual property that are improvements or modifications to or that are based on or derived in whole or in part from or that otherwise relate to any Licensed Technology to the extent such patents, Know-How (including all data and regulatory submissions), or other intellectual property pertains to the Licensed GT Products or Licensed Treatments that were being developed or Commercialized by Bayer at the time of termination. To effectuate such license, upon any such termination of this Agreement, Bayer will promptly disclose to Dimension all Bayer Technology not already known to Dimension;obligations.
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