Common use of Grant of License Option Clause in Contracts

Grant of License Option. 3.01 Subject to rights of the United States under grants to UM and pursuant to 35 U.S.C. Section 201 et seq. and all implementing regulations, and subject to Section 3.02, UM grants to CDI, and CDI accepts, an exclusive worldwide license under Patent Rights to make, have made, use, lease, offer to sell, sell and import the Licensed Products within the Licensed Field for the term of this Agreement. This license includes the right to grant sublicenses constituent with this Agreement. 3.02 UM specifically reserves the rights: (a) to practice under the Patent Rights to make and use the Licensed Products on a royalty-free basis solely for research and education; (b) to provide information and material covered by the Patent Rights to universities, colleges and other research or educational institutions, but only for research and educational purposes and uses and not for any commercial purposes or uses; (c) to disseminate and publish the general scientific findings from research related to Patent Rights, provided that CDI has had the opportunity to review copies of all drafts relative to the use of Patent Rights within the Licensed Field prior to submission for publications, as set forth in Section 7.05 below; and (d) to license the Patent Rights for applications outside the Licensed Field. 3.03 CDI may transfer its rights to an Affiliate consistent with this Agreement, provided CDI is responsible for the obligations of its Affiliate relevant to this Agreement, including the payment of royalties, whether or not paid to CDI by its Affiliate. 3.04 CDI may grant sublicenses consistent with this Agreement, provided CDI is responsible for the obligations of its Sublicensees relevant to this Agreement as if the operations were carried out by CDI, including the payment of royalties, whether or not paid to CDI by its Affiliate. 3.05 CDI will identify its Affiliates and its Sublicensees under this Agreement to UM by name, address and field of sublicense(both as to geography and subject matter), and will promptly provide to UM a copy of each sublicense and a copy of each agreement or document designating or establishing an Affiliate having the right to use the Patent Rights. 3.06 The licenses granted under this Agreement do not confer any rights upon CDI by implication, estoppel, or otherwise as to any technology not specifically encompassed by Patent Rights, or any rights to use Patent Rights outside the Licensed Field. Joint Improvements and UM Improvements are not considered part of Patent Rights unless added to Exhibit A-1 by proper amendment of this Agreement. 3.07 IF CDI intends to accept from Affiliates or Sublicensees anything of value in lieu of cash in consideration for any sublicense or other transfer of Patent Rights, CDI must first obtain UM's written approval. (a) UM Improvements are owned by UM. Joint Improvements are owned jointly by CDI and UM. CDI Improvements are owned by CDI, but CDI hereby grants to Um a non-exclusive, non-transferable, irrevocable, and royalty-free license to practice CDI Improvements in any field of use for research and education but not for commercial purposes. (b) Subject to rights of other parties sponsoring research at UM, CDI has a first option to enter into a license agreement with UM for UM Rights in Improvements, within the Licensed Field, so long as (i) this Agreement is in effect, (ii) CDI pays Patent Expenses for UM Rights in Improvements, and (iii) CDI has not notified UM that CDI declines to exercise its option. During the term of this option, UM Rights in Improvements will be subject to the same patent prosecution terms and conditions applicable to Patent Rights under Article 7 of this Agreement. CDI is responsible for the filing, prosecution, and maintenance of patent applications for CDI Improvements unless CDI and UM Agree otherwise in writing. (c) CDI may exercise its option to UM Rights in Improvements by giving written notice to UM within 60 days after CDI receives written notice from UM of a UM Improvement or Joint Improvement in accordance with Section 3.08(e) below, or within 60 days after CDI gives (d) The terms of any license to CDI for UM Rights in Improvements will include a reservation of a nonexclusive, non-transferable, irrevocable and royalty-free license to UM to practice UM Rights in Improvements in any field of use for research and education but not for commercial purposes. (e) UM will report promptly to CDI in writing each UM Improvement or Joint Improvement. CDI will report promptly to UM in writing each CDI Improvement or Joint Improvement. These reports will be in sufficient detail to determine inventorship. These reports will be treated as Confidential Information. Inventorship will be determined in accordance with the patent laws of the United States. (a) Subject to rights of the United States under grants to UM and pursuant to 35 U.S.C. Section 201 et seq. and all implementing regulations, and subject to the reservations of rights set forth in Section 3.02 as applied to Tangible Research Property, UM grants to CDI, and CDI accepts, an exclusive worldwide license to use Tangible Research Property to make, have made, use, lease, offer to sell, sell and import the Licensed Products within the Licensed Field for the term of this Agreement. This license includes the right to grant sublicenses consistent with this Agreement. (b) Promptly after signing this Agreement UM will make available to CDI the Tangible Research Property listed in Exhibit B. CDI, its Affiliates and Sublicensees may use the Tangible Research Property to develop and commercialize Licensed products but cannot use if for any other purpose, including, but not limited to research related to matters other than development of Licensed Products. UM retains title to all Tangible Research Property. CDI will protect the Tangible Research Property at least as well as it protects its own tangible research property and will take measures to protect the Tangible Research Property

Grant of License Option. 3.01 Subject to rights of the United States that may exist under grants to UM and pursuant to 35 U.S.C. U.S.C, Section 201 et seq. and all implementing regulations, and subject to Section 3.02, UM grants to CDICompany, and CDI Company accepts, an exclusive worldwide license under Patent Rights to make, have made, use, lease, offer to sell, sell and import the Licensed Products within the Licensed Field for the term of this Agreement. This license includes the right to grant sublicenses constituent consistent with this Agreement. 3.02 UM specifically reserves the rights: (a) to practice under the Patent Rights to and make and use the Licensed Products on a royalty-free basis solely for research and education; , and to license universities, colleges, and other research or educational institutions to practice under the Patent Rights and make and use the Licensed Products on a royalty-free basis solely for research and education; (b) to provide information and material covered by the Patent Rights to universities, colleges and other research or educational institutions, but only for research and educational purposes and uses and not for any commercial purposes or uses; and (c) to permit UM Personnel to disseminate and publish the general scientific findings from research related to Patent Rights, provided that CDI has had the opportunity to review copies of all drafts relative Rights subject to the use of Patent Rights within the Licensed Field prior to submission for publications, as set forth requirements in Section 7.05 below; and (d) to license the Patent Rights for applications outside the Licensed Field7.05, when appropriate. 3.03 CDI Company may transfer its rights to an Affiliate consistent with this Agreement, provided CDI Company is responsible for the obligations of its Affiliate relevant to this Agreement, including the payment of royalties, whether or not paid to CDI Company by its Affiliate. 3.04 CDI Company may grant sublicenses consistent with this Agreement, provided CDI Company is responsible for the obligations of its Sublicensees relevant to this Agreement as if the operations were carried out by CDIAgreement, including the payment of royalties, whether or not paid to CDI Company by its AffiliateSublicensees. 3.05 CDI Company will identify its Affiliates and its Sublicensees under this Agreement to UM by name, address and field of sublicense(both sublicense (both as to geography and subject matter), and will promptly provide to UM a copy of each sublicense and a copy of each agreement or document designating or establishing an Affiliate having the right to use the Patent Rights. Company may redact information from an agreement or document provided however UM is advised of the nature of the information redacted, Further, each agreement and document must contain sufficient information for UM to determine that Company, Affiliates and Sublicensees are operating in accordance with this Agreement, including the kinds and amounts of consideration exchanged and the schedule and amount of payments due to Company. 3.06 The licenses granted under this This Agreement do not confer any confers no license or rights upon CDI by implication, estoppel, or otherwise as to under any technology not specifically encompassed by Patent Rights, or any rights to use patent applications of UM other than Patent Rights outside within the Licensed Field, regardless of whether such patent applications or patents are dominant or subordinate to Patent Rights within the Licensed Field. Joint Improvements and UM Improvements are not considered part of Patent Rights unless added to Exhibit A-1 by proper amendment of this Agreement. 3.07 IF CDI intends to accept If Company accepts from Affiliates or Sublicensees anything of value in lieu of cash in consideration for any sublicense or other transfer of Patent RightsRights or Licensed Products, CDI Company must first obtain UM's written approvalnotify UM in writing within 30 days. (a) UM Improvements are owned by UM. Joint Improvements improvements are owned jointly by CDI Company and UM. CDI Company Improvements are owned by CDICompany, but CDI hereby grants subject to Um a non-exclusive, non-transferable, irrevocable, and royalty-free license to UM to practice CDI Company Improvements in any field of use for research and or education but not for commercial purposes. (b) Subject to rights of other parties sponsoring research at UM, CDI Company has a first option to enter into a license agreement with UM for UM Rights in Improvements, within the Licensed Field, so long as (i) this Agreement is in effect, (ii) CDI Company pays Patent Expenses for UM Rights in Improvements, and (iii) CDI Company has not notified UM that CDI Company declines to exercise its option. During the term of this option, UM Rights in Improvements will be subject to the same patent prosecution terms and conditions applicable to Patent Rights under Article 7 of this Agreement. CDI . (c) Company is responsible for the filing, prosecution, and maintenance of patent applications for CDI Company Improvements unless CDI Company and UM Agree agree otherwise in writing. (cd) CDI Company may exercise its option to UM Rights in Improvements by giving written notice to UM within 60 days after CDI Company receives written notice from UM of a UM Improvement or Joint Improvement in accordance with Section 3.08(e3.08(f) below, or within 60 days after CDI givesCompany gives written notice to UM of a Joint Improvement in accordance with Section 3.08(f) below. Company's exercise of the option initiates a negotiation period of 120 days. If the negotiation period ends and Company and UM have not executed an amendment to this Agreement adding all or a portion of UM Rights in Improvements to the license, UM will be free to license to others all or a portion of UM Rights in Improvements not licensed to Company. (de) The terms of any license to CDI Company for UM Rights in Improvements will include a reservation of a nonexclusive, non-transferable, irrevocable and royalty-free license to UM to practice UM Rights in Improvements in any field of use for research and education but not for commercial purposes. (e1) UM will report promptly to CDI Company in writing each UM Improvement or available for option and each Joint Improvement. CDI Company will report promptly to UM in writing each CDI Company Improvement or and each Joint Improvement. These reports will be in sufficient detail to determine inventorship. These reports will be treated as Confidential Information. Inventorship will be determined in accordance with the patent laws of the United States. (a) Subject to rights of the United States under grants to UM and pursuant to 35 U.S.C. Section 201 et seq. and all implementing regulations, and subject to the reservations of rights set forth in Section 3.02 as applied to Tangible Research Property, UM grants to CDI, and CDI accepts, an exclusive worldwide license to use Tangible Research Property to make, have made, use, lease, offer to sell, sell and import the Licensed Products within the Licensed Field for the term of this Agreement. This license includes the right to grant sublicenses consistent with this Agreement. (b) Promptly after signing this Agreement UM will make available to CDI the Tangible Research Property listed in Exhibit B. CDI, its Affiliates and Sublicensees may use the Tangible Research Property to develop and commercialize Licensed products but cannot use if for any other purpose, including, but not limited to research related to matters other than development of Licensed Products. UM retains title to all Tangible Research Property. CDI will protect the Tangible Research Property at least as well as it protects its own tangible research property and will take measures to protect the Tangible Research Property