TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7. 7.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act. 7.3 The IC shall specifically have the right to terminate this Agreement by written notice if the (a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or (b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement. 7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee. 7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect. 7.6 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible. 7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees. 7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page. (a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes. (b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof. (c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a); (d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and (e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled. 7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 4 contracts
Sources: Non Exclusive Patent License Agreement, Non Exclusive Patent License Agreement, Non Exclusive Patent License Agreement
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thethe IC determines that the Licensee:
(a) has is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or the Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this
(e) is not keeping the Licensed Products or the Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs;
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived; or
(h) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement.
7.4 13.6 In making the determination referenced in Paragraph 13.5, the IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(g). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(g) or fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement.
13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a sixty (60) day opportunity to respond, the IC shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the Licensed Patent Rights. The IC shall not require the granting of a sublicense unless the responsible applicant has first negotiated in good faith with the Licensee.
13.8 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.9 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialofficial or designee. The decision of the designated IC official or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 13.10 Within ninety (90) days of expiration, expiration or termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expenses, due to the IC shall become immediately due and payable upon termination or expiration. If terminated under this Article 13, sublicensees may elect to convert their sublicenses to direct licenses with the IC pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 3 contracts
Sources: Patent License Agreement, Patent License Agreement, Patent License Agreement
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.15 are not fulfilled, and shall extend to either the expiration of the last to expire at of the time specified in Appendix BLicensed Patent Rights or twenty (20) years, whichever is longer, unless previously sooner terminated under the terms of as provided in this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement in any country or territory by giving IC sixty (60) days written notice to that effect.
13.5 IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if theIC determines that the Licensee:
(a) has is not demonstrated that it is executing the research plan WHO C-TAP Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted omitted, a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this
(e) is not keeping Licensed Products or Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs; or
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2, unless waived; or
(h) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement.
7.4 The 13.6 In making the determination referenced in Paragraph 13.5, IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, IC shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to, IC’s concerns as to the items referenced in 13.5(a)-13.5(h). If the Licensee fails to alleviate IC’s concerns as to the items referenced in 13.5(a)-13.5(h) or fails to initiate corrective action to IC’s satisfaction, IC may terminate this Agreement.
13.7 IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this the action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.8 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 13.9 Within ninety (90) days of expiration, expiration or termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expense, due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 3 contracts
Sources: Patent License Non Exclusive and Biological Materials License Non Exclusive, Patent License Non Exclusive and Biological Materials License Non Exclusive, Patent License Non Exclusive and Biological Materials License Non Exclusive
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all partiesparties “Effective Date”, unless the provisions of Paragraph 8.8 14.15 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) [**] days after the date of notice in writing of the default, the IC PHS may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC 13.3 In the event that Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, Licensee shall immediately notify PHS in writing. Furthermore, PHS shall have the right to terminate this Agreement immediately upon Licensee’s receipt of written notice.
13.4 Licensee shall have a unilateral right to terminate this Agreement in any country or territory by giving PHS sixty (60) days written notice to that effect.
13.5 PHS shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thePHS determines that the Licensee:
(a) has is not demonstrated that it is executing the research plan Commercial Development Plan, as may be amended from time to time in accordance with the provisions of Paragraphs 9.2 and 14.4, submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to PHS’ satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or Licensed Processes;
(b) has not achieved the Benchmarks, as may be amended from time to time in accordance with the provisions of Paragraphs 9.2 and 14.4, as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted omitted, a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this Agreement;
(e) is not keeping Licensed Products or Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs; or
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2, unless waived.
7.4 The IC 13.6 In making the determination referenced in Paragraph 13.5, PHS shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, PHS shall give written notice to Licensee providing Licensee specific notice of, and a [**] day opportunity to respond to, PHS’ concerns as to the items referenced in 13.5(a)-13.5(g). If Licensee fails to alleviate PHS’ concerns as to the items referenced in 13.5(a)-13.5(g) or fails to initiate corrective action to PHS’ satisfaction, PHS may terminate this Agreement.
13.7 PHS reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this the action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.8 Within thirty (30) [**] days of receipt of written notice of the IC’s PHS’ unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. CFR §404.11, appeal the decision by written submission to the designated IC PHS official. The decision of the designated IC PHS official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 13.9 Within ninety (90) [**] days of expiration, expiration or termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expense, due to the IC PHS shall become immediately due and payable upon termination or expiration. If terminated under this Article 13, Sublicensees may elect to convert their sublicenses to direct licenses with PHS pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC PHS or provide the IC PHS with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
Sources: Patent License Agreement (Merrimack Pharmaceuticals Inc), Patent License Agreement (Merrimack Pharmaceuticals Inc)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.17 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 13. In the event that the Licensee LICENSEE is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days 30 after the date of notice in writing of the default, the IC VA may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC , 15 U.S.C. § 1692 et seq. In the event that LICENSEE becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, LICENSEE shall immediately notify VA in writing. Furthermore, VA shall have the right to terminate this Agreement immediately upon LICENSEE's receipt of written notice. LICENSEE shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving 180 days written notice to that effect. VA shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if the
(a) has VA determines that the LICENSEE: is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the LICENSEE cannot otherwise demonstrate to VA’s satisfaction that the LICENSEE has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights Products or Licensed Processes; has not achieved the Benchmarks as contemplated by this Agreementmay be modified under Paragraph 9.2; or
(b) has willfully made a false statement of of, or willfully omitted a material fact in its the license application for a license or in any report required by the license Agreement; has committed a material breach of a covenant or agreement contained in this Agreement.
7.4 The IC ; is not keeping Licensed Products or Licensed Processes reasonably available to the public after commercial use commences; cannot reasonably satisfy unmet health and safety needs; or cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived. When the public health and safety so require, and after written notice to LICENSEE providing LICENSEE a sixty (60) day opportunity to respond, VA shall have the right to require LICENSEE to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of Use under the Licensed Patent Rights, unless LICENSEE can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the Licensed Patent Rights. VA shall not require the granting of a sublicense unless the responsible applicant has first negotiated in good faith with LICENSEE. VA reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 LICENSEE. Within thirty (30) days of receipt of written notice of the IC’s VA's unilateral decision to modify or terminate this Agreement, the Licensee LICENSEE may, consistent with the provisions of 37 C.F.R. CFR §404.11, appeal the decision by written submission to the designated IC VA official. The decision of the designated IC VA official shall be the final agency decision. The Licensee LICENSEE may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modificationavailable. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, expiration or termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the LicenseeLICENSEE. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expense, due to the IC VA shall become immediately due and payable upon termination or expiration. If terminated under this Article 13, SUBLICENSEES may elect to convert their sublicenses to direct licenses with VA pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee LICENSEE shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC VA or provide the IC VA with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.01 This Agreement AGREEMENT is effective when signed by all partiesparties and shall extend to the expiration of the last to expire of the LICENSED PATENT RIGHTS unless sooner terminated as provided in this Article 13.
13.02 The terms and conditions of this AGREEMENT shall be considered by PHS to be withdrawn from LICENSEE's consideration and the terms and conditions of this AGREEMENT and the AGREEMENT itself to be null and void, unless this AGREEMENT is executed within sixty (60) days from the provisions date of Paragraph 8.8 are not fulfilled, and shall expire printing indicated at the time specified in Appendix B, unless previously terminated under the terms bottom of this Article 7each page.
7.2 13.03 In the event that the Licensee LICENSEE is in default in the performance of any material obligations under this AgreementAGREEMENT, including but not limited to the obligations listed in Paragraph 7.3 13.06, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the such default, the IC PHS may terminate this Agreement AGREEMENT by written notice and pursue outstanding royalties amounts owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC 13.04 In the event that LICENSEE becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, LICENSEE shall specifically immediately notify PHS in writing. Furthermore, PHS shall have the right to terminate this Agreement by AGREEMENT immediately upon LICENSEE's receipt of written notice if the
(a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreementnotice.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee 13.05 LICENSEE shall have a unilateral right to terminate this Agreement AGREEMENT in any country or territory by giving the IC PHS sixty (60) days written notice to that effect.
7.6 Within thirty (3013.06 PHS shall specifically have the right to terminate or modify, at its option, this AGREEMENT, if PHS determines that the LICENSEE: 1) days of receipt of written notice is not executing the COMMERCIAL DEVELOPMENT PLAN attached in Appendix E and the LICENSEE cannot otherwise demonstrate to PHS's satisfaction that the LICENSEE has taken, or can be expected to take within a reasonable time, effective steps to achieve PRACTICAL APPLICATION of the IC’s unilateral decision to modify LICENSED PRODUCTS or terminate this Agreement, LICENSED PROCESSES; 2) has not achieved the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that BENCHMARKS as may be accessiblemodified under Paragraph 9.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
Sources: Patent License Agreement (Inhibitex Inc), Patent License Agreement (Inhibitex Inc)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 . In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 . The IC shall specifically have the right to terminate this Agreement by written notice if the
(a) the Licensee: has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) or has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 . The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 . The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 . Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 . If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 . Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) . The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) . Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) . If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) ; If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) and The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 . Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
Sources: Non Exclusive Patent License Agreement, Non Exclusive Patent License Agreement
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.01 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, parties and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.02 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 Article 13.05, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the such default, the IC PHS may terminate this Agreement by written notice and pursue outstanding royalties amounts owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC 13.03 In the event that Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, Licensee shall specifically immediately notify PHS in writing. Furthermore, PHS shall have the right to terminate this Agreement by immediately upon Licensee's receipt of written notice if the
(a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreementnotice.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The 13.04 Licensee shall have a unilateral right to terminate this Agreement and/or any licenses in any country or territory by giving the IC PHS sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of 13.05 PHS shall specifically have the IC’s unilateral decision right to modify terminate or terminate modify, at its option, this Agreement, if PHS determines that the Licensee: I) is not executing the Commercial Development Plan submitted with its request for a license and the Licensee maycannot otherwise demonstrate to PHS's satisfaction that the Licensee has taken, consistent with the provisions or can be expected to take within a reasonable time, effective steps to achieve Practical Application of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b; 2) Any royalty paymentshas not achieved the Benchmarks as may be modified under Paragraph 9.02; 3) has willfully made a false statement of, including those incurred but or willfully omitted, a material fact in the license application or in any report required by the license Agreement; 4) has committed a material breach of a covenant or agreement contained in the license; 5) is not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all keeping Licensed Products or other materials included within the Licensed Patent Rights Processes reasonably available to the IC public after commercial use commences; 6) cannot reasonably satisfy unmet health and safety needs; or provide 7) cannot reasonably justify a failure to comply with the IC domestic production requirement of Paragraph 5.02 unless waived. In making this determination, PHS will take into account the normal course of such commercial development programs conducted with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC sound and reasonable business practices and judgment and the annual reports submitted by Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilledunder Paragraph 9.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
Sources: Asset Assignment Agreement (Compass Biotechnologies Inc.), Asset Assignment Agreement (Cyplasin Biomedical Ltd.)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.15 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement in any country or territory by giving the IC sixty (60) days written notice to that effect.
13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thethe IC determines that the Licensee:
(a) has is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted omitted, a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this
(e) is not keeping Licensed Products or Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs; or
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2, unless waived.
7.4 (h) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement.
13.6 In making the determination referenced in Paragraph 13.5, the IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(g). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(g) or fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement.
13.7 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this the action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.8 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated the IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 13.9 Within ninety (90) days of expiration, expiration or termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expense, due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 12.1 This Agreement is shall become effective when signed by all parties, as of the Effective Date unless the provisions of Paragraph 8.8 22 are not fulfilled, fulfilled and shall expire at twenty-four (24) months from its Effective Date. Within sixty (60) days of the time specified in Appendix B, unless previously terminated under the terms termination or expiration of this Article 7.
7.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default unless an IC Exclusive or Non-exclusive Commercial Patent License has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC shall specifically have the right to terminate this Agreement by written notice if the
(a) has not demonstrated that it is executing the research plan submitted with its application executed for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights in the Licensed Field(s) of Use, as contemplated by stipulated in Paragraph 5.3 of this Agreement; or
, the Licensee shall return all Materials and Licensed Products to the IC or provide the IC with written certification of their destruction. The Licensee further agrees that it shall be responsible for the destruction of any remaining Materials and Licensed Products from the Third Party Collaborator(s) and Third Party Contractor(s) to the Licensee, and the Licensee shall obtain written certification from the Third Party Collaborator(s) and Third Party Contractor(s) that any remaining Materials or Licensed Products in their possession have been destroyed and to provide IC with a copy of said written notification within sixty (b60) has willfully made a false statement days of the termination or willfully omitted a material fact in its application for a license or in any report required by expiration of this Agreement.
7.4 12.2 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined determines that this action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 12.3 The Licensee IC shall specifically have a unilateral the right to terminate or modify this Agreement by giving Agreement, at its sole option, if the IC sixty (60) days written notice determines that the Licensee: has not adhered to that effectthe Commercial Evaluation Plan in Appendix E, as may be amended by mutual agreement of the parties; has not performed or has not exercised reasonable commercial efforts towards performance of the Benchmarks by the requisite deadlines specified in Appendix D, as may be modified under Paragraph 10.3; has willfully made a false statement or willfully omitted a material fact in the license application or in any report required by this Agreement; has committed a material breach of a covenant or agreement contained in this Agreement; or cannot reasonably satisfy unmet health and safety needs.
7.6 12.4 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialofficial or designee. The decision of the designated IC official or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires 12.5 The Licensee shall have a modification unilateral right to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to terminate this Agreement or their designeesany licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
7.8 12.6 Within ninety thirty (9030) days of expiration, expiration or termination or term extension of this Agreement under this Article 712, a final written report shall be submitted by the LicenseeLicensee in accordance with Paragraph 11.
1. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but may not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) granted additional IC licenses if this final reporting requirement is not fulfilled. Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) paid, and those related to patent expenses, due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
Sources: Exclusive Evaluation Option License Agreement, Exclusive Evaluation Option License Agreement
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing. Furthermore, to the extent allowed under applicable law, the IC shall specifically have the right to terminate this Agreement by immediately upon the Licensee’s receipt of written notice if the
(a) has notice; provided, however, that with respect to any petition filed against the Licensee, the IC shall not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 The IC reserves have the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it the Licensee is determined that this action is necessary able to meet resolve or obtain the requirements for public use specified by Federal regulations issued after dismissal of such petition within ninety (90) days following the date of the license and these requirements are not reasonably satisfied by the Licenseesuch notice.
7.5 13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of 13.5 The IC shall specifically have the IC’s unilateral decision right to modify terminate or terminate modify, at its option, this Agreement, if the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies determines that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.:
(a) The report shall includeis not executing the Commercial Development Plan submitted with its request for a license and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, but not or can be limited toexpected to take within a reasonable time, progress on effective steps to achieve the research and development involving the Licensed Patent Rights, Practical Application of the Licensed Products or the Licensed Processes.;
(b) Any royalty payments, including those incurred but has not yet paid (such achieved the Benchmarks as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for may be modified under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.Paragraph 9.2;
(c) If has willfully made a false statement of, or willfully omitted a material fact in the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate license application or in good faith regarding the schedule for reports regarding the information any report required in 7.8(a)by this Agreement;
(d) If the term has committed a material breach of a covenant or agreement contained in this Agreement is longer than ten that has not been remedied within the ninety (1090) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; anddays period set forth in Paragraph 13.2 above;
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilledkeeping the Licensed Products or the Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs;
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived; or
(h) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement.
7.9 Paragraphs 4.313.6 In making the determination referenced in Paragraph 13.5, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 the IC shall take into account the normal course of such commercial development programs conducted with sound and 7.9 reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall survive termination give written notice to the Licensee providing the Licensee specific NIH Patent License Agreement—Exclusive notice of, and a ninety (90) day opportunity to respond to and remedy, the IC’s concerns as to the items referenced in 13.5(a)-13.5(h). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(h) within ninety (90) days following written notice from the IC, or otherwise fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement upon written notice to the Licensee.
13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a sixty (60) day opportunity to respond, the IC shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of this Agreement.Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the
Appears in 2 contracts
Sources: Patent License Agreement (Kyverna Therapeutics, Inc.), Patent License Agreement (Kyverna Therapeutics, Inc.)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.15 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement in any country or territory by giving the IC sixty (60) days written notice to that effect.
13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thethe IC determines that the Licensee:
(a) has is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted omitted, a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this
(e) is not keeping Licensed Products or Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs; or
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2, unless waived.
7.4 (h) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement.
13.6 In making the determination referenced in Paragraph 13.5, the IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(g). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(g) or fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement.
13.7 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this the action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.8 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. CFR §404.11, appeal the decision by written submission to the designated the IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 13.9 Within ninety (90) days of expiration, expiration or termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expense, due to the IC shall become immediately due and payable upon termination or expiration. If terminated under this Article 13, sublicensees may elect to convert their sublicenses to direct licenses with the IC pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional the IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing. Furthermore, to the extent allowed under applicable law, the IC shall have the right to terminate this Agreement immediately upon the Licensee’s receipt of written notice; provided, however, that with respect to any petition filed against the Licensee, the IC shall not have the right to terminate this Agreement if the Licensee is able to resolve or obtain the dismissal of such petition within ninety (90) days following the date of such notice.
13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thethe IC determines that the Licensee:
(a) has is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or the Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this Agreement that has not been remedied within the ninety (90) days period set forth in Paragraph 13.2 above;
(e) is not keeping the Licensed Products or the Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs;
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived; or
(h) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement. NIH Patent License Agreement—Exclusive Model 10-2015 Page 15 of 29 [Final] [Kyverna Therapeutics] [12 May 2021]
13.6 In making the determination referenced in Paragraph 13.5, the IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to and remedy, the IC’s concerns as to the items referenced in 13.5(a)-13.5(h). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(h) within ninety (90) days following written notice from the IC, or otherwise fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement upon written notice to the Licensee.
7.4 13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a sixty (60) day opportunity to respond, the IC shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the Licensed Patent Rights. The IC shall not require the granting of a sublicense unless the responsible applicant has first negotiated in good faith with the Licensee.
13.8 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement upon written notice to the Licensee if it is determined that this action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the LicenseeLicensee within ninety (90) days following written notice from the IC.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.9 Within thirty (30) days of after receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialofficial or designee. The decision of the designated IC official or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice 13.10 Within […***…] of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement expiration or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expenses, due to the IC shall become immediately due and payable upon termination or expiration. If terminated under this Article 13, sublicensees may elect to convert their sublicenses to direct licenses with the IC pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall have the right to offer for sale and sell any existing inventory of Licensed Products for […***…] following the effective termination date of this Agreement, subject to the royalty obligations as set forth in Appendix C. After this […***…] period, the Licensee shall return all remaining Materials, Licensed Products or Products, and other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 2 contracts
Sources: Patent License Agreement (Kyverna Therapeutics, Inc.), Patent License Agreement (Kyverna Therapeutics, Inc.)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The 13.3 In the event that the Licensee files a petition in bankruptcy, has such a petition filed against it, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing. To the extent allowed under applicable law, the IC shall specifically have the right to terminate this Agreement by immediately upon the Licensee’s receipt of written notice if the
(anotice. However, with respect to any petition(s) has not demonstrated that it is executing filed against the research plan submitted with its application for a license Licensee, Licensee shall have [***] to resolve or that it has not taken obtain the dismissal of such petition. If resolution or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application dismissal of the Licensed Patent Rights as contemplated by this Agreement; or
(bpetition(s) has willfully made a false statement of or willfully omitted a material fact is not achieved in its application for a license or in any report required by the allotted period, IC shall have the right to immediately terminate this Agreement.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of 13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated Licensee, if the IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer determines in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by that the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.:
(a) The report shall includeis not executing the Commercial Development Plan submitted with its request for a license and the Licensee cannot otherwise demonstrate to the IC’s reasonable satisfaction that the Licensee has taken, but not or can be limited toexpected to take within a reasonable time, progress on effective steps to achieve the research and development involving the Licensed Patent Rights, Practical Application of the Licensed Products or the Licensed Processes.;
(b) Any royalty payments, including those incurred but has not yet paid (such achieved the Benchmarks as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for may be modified under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.Paragraph 9.2;
(c) If has willfully made a false statement of, or willfully omitted a material fact in the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate license application or in good faith regarding the schedule for reports regarding the information any report required in 7.8(a)by this Agreement;
(d) If the term has committed a material breach of a covenant or agreement contained in this Agreement is longer than ten that has not been remedied within the ninety (1090) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; andday period set forth in Paragraph 13.2 above;
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilledkeeping the Licensed Products or the Licensed Processes reasonably available to the public after commercial use commences; or
(f) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived.
7.9 Paragraphs 4.313.6 In making the determination referenced in Paragraph 13.5, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 the IC shall take into account the normal course of such commercial development programs conducted with sound and 7.9 reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall survive termination give written notice to the Licensee providing the Licensee specific notice of, and a [***] opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(f). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(f) within [***] following written notice from the IC or fails to initiate corrective action to the IC’s reasonable satisfaction, the IC may terminate this Agreement upon written notice to the Licensee.
13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a [***] opportunity to respond, the IC shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of this Agreement.Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.15 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days [***] after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement in any country or territory by giving the IC [***] written notice to that effect.
13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thethe IC determines that the Licensee:
(a) has is not demonstrated that it is using reasonable commercial efforts, as defined in Paragraph 10.1, in executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted omitted, a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this Agreement;
(e) is not keeping Licensed Products or Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs; or
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2, unless waived.
7.4 13.6 In making the determination referenced in Paragraph 13.5, the IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a [***] opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(g). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(g) or fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement.
13.7 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this the action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.8 Within thirty (30) days [***] of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated the IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice 13.9 Within [***] of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement expiration or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expense, due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for If terminated under this AgreementArticle 13, upon sublicensees may elect to convert their sublicenses to direct licenses with the IC pursuant to Paragraph 4.3. For a period of [***] following termination or expiration of this Agreement, the Licensee shall have the right to offer for sale and sell any existing inventory of Licensed Products, subject to the royalty obligations as set forth in Appendix C. After this [***] period, the Licensee shall return all remaining Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
Sources: Patent License Agreement (Cellular Biomedicine Group, Inc.)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 . In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC NIH may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 . The IC NIH shall specifically have the right to terminate this Agreement by written notice if the
(a) the Licensee: has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) or has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 . The IC NIH reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 . The Licensee shall have a unilateral right to terminate this Agreement by giving the IC NIH sixty (60) days written notice to that effect.
7.6 . Within thirty (30) days of receipt of written notice of the ICNIH’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialDirector of the NIH or designee. The decision of the designated IC official NIH Director or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 available. If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 . Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC NIH at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) . The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) . Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC NIH shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC NIH or provide the IC NIH with written certification of the destruction thereof.
(c) . If the term of the Agreement is extended at the Licensee’s request, then the IC NIH and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) ; If the term of this Agreement is longer than ten (10) years, then the IC NIH may request a status update report after the fifth (5th) year of the Agreement; and
(e) and The Licensee may not be granted additional IC NIH licenses if this reporting requirement is not fulfilled.
7.9 . Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a Third Party’s intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC shall specifically have the right to terminate this Agreement by written notice if the
(a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreementwriting.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of 13.5 The IC shall specifically have the IC’s unilateral decision right to modify terminate or terminate modify, at its option, this Agreement, if the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies determines that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.:
(a) The report shall includeis not executing the Commercial Development Plan submitted with its request for a license and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, but not or can be limited toexpected to take within a reasonable time, progress on effective steps to achieve the research and development involving the Licensed Patent Rights, Practical Application of the Licensed Products or the Licensed Processes.;
(b) Any royalty payments, including those incurred but has not yet paid (such achieved the Benchmarks as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for may be modified under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.Paragraph 9.2;
(c) If has willfully made a false statement of, or willfully omitted a material fact in the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate license application or in good faith regarding the schedule for reports regarding the information any report required in 7.8(a);
by this Agreement; CONFIDENTIAL NIH Patent License Agreement–Exclusive US-DOCS\144314366.1 17 (d) If the term has committed a material breach of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of covenant or agreement contained in this Agreement.;
Appears in 1 contract
Sources: Patent License Agreement (CARGO Therapeutics, Inc.)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.17 are not fulfilled, and shall extend to the expiration of the last to expire at Valid Claim within the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days [***] after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a Third Party’s intention to file an involuntary petition in bankruptcy, the Licensee shall promptly notify the IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC [***] written notice to that effect.
13.5 The IC shall specifically have the right to terminate this Agreement pursuant to Paragraph 13.6, such termination to be deemed effective upon the earliest of: 1. expiration of the [***] time period by which Licensee can submit a formal written notice appeal, if thesuch period expires without submission by Licensee of such appeal, 2. upon final agency decision in response to the formal written appeal in accordance with Paragraph 13.9, or 3. upon Licensee’s written notification of its acceptance of the termination of this Agreement, if the IC reasonably determines that the Licensee:
(a) has is not demonstrated that it is executing using reasonable commercial efforts to execute the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or (as amended in accordance with this Agreement) and the Licensee cannot otherwise demonstrate to the IC’s reasonable satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective reasonable commercial steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or the Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted a material fact in its the license application for a license or in any report required by this Agreement.;
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3(d) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date has committed a material breach of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify covenant or terminate agreement contained in this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.;
(ae) The report shall include, but is not be limited to, progress on the research and development involving the Licensed Patent Rights, keeping the Licensed Products or the Licensed ProcessesProcesses reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs;
(g) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement; or
(h) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived.
(b) Any royalty payments13.6 In making the determination referenced in Paragraph 13.5, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due take into account the normal course of such commercial development programs conducted with sound and payable upon reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration modification of this AgreementAgreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a [***] opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(h). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(h) or fails to initiate corrective action to the IC’s reasonable satisfaction within such [***] period, the IC may terminate this Agreement upon written notice to Licensee.
13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a [***] opportunity to respond, the IC shall return all have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Products or other materials included within Fields of Use under the Licensed Patent Rights Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not alleviate concerns of public health and safety and materially increase the availability to the IC or provide the IC with written certification public of the destruction thereof.
(c) If the term subject matter of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.the
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC shall specifically have the right to terminate this Agreement by written notice if thethe Licensee:
(a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Materials, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Materials and Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of their destruction, unless the destruction thereof.Licensee has executed a commercialization license for the Licensed Patent Rights or Licensed Products..
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 4.5, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
Sources: Patent and Biological Materials License Agreement (GeoVax Labs, Inc.)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.01 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, parties and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.02 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the such default, the IC PHS may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Actnotice.
7.3 The IC 13.03 At least thirty (30) days prior to filing a petition in bankruptcy, Licensee must inform PHS in writing of its intention to file the petition in bankruptcy or of a third party's intention to file an involuntary petition in bankruptcy.
13.04 In the event that Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, Licensee shall specifically immediately notify PHS in writing. Furthermore, PHS shall have the right to terminate this Agreement by giving Licensee written notice if the
(a) has not demonstrated that it notice. Termination of this Agreement is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application upon Licensee's receipt of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreementwritten notice.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The 13.05 Licensee shall have a unilateral right to terminate this Agreement and/or any licenses in any country by giving the IC PHS sixty (60) days days' written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of 13.06 PHS shall specifically have the IC’s unilateral decision right to modify terminate or terminate modify, at its option, this Agreement, if PHS determines that the Licensee: 1) is not executing the Commercial Development Plan submitted with its request for a license and the Licensee maycannot otherwise demonstrate to PHS's satisfaction that the Licensee has taken, consistent with the provisions or can be expected to take within a reasonable time, effective steps to achieve practical application of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes; 2} has not achieved the Benchmarks as may be modified under Paragraph 9.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
Sources: Patent License Agreement (Advanced Life Sciences Holdings, Inc.)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.01 This Agreement is effective when signed by all parties, unless as of the provisions of Paragraph 8.8 are not fulfilled, Effective Date and shall extend to the expiration of the last to expire at of the time specified Patent Rights or the royalty term defined in Appendix B, Section 6.03.3 unless previously sooner terminated under the terms of as provided in this Article 713.
7.2 13.02 In the event that the Licensee LICENSEE is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the such default, the IC OHSU may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Actnotice.
7.3 The IC 13.03 In the event that LICENSEE becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party’s intention to file an involuntary petition in bankruptcy, LICENSEE shall specifically immediately notify OHSU in writing. Furthermore, OHSU shall have the right to terminate this Agreement by giving LICENSEE written notice if the
(a) has not demonstrated that it notice. Termination of this Agreement is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application upon LICENSEE’s receipt of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreementwritten notice.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee 13.04 LICENSEE shall have a unilateral right to terminate this Agreement and/or any licenses in any country by giving the IC OHSU sixty (60) days written notice to that effect.
7.6 Within thirty 13.05 OHSU shall have the right to terminate or modify, at its option, this Agreement if LICENSEE (30a) days cannot demonstrate to OHSU’s satisfaction that LICENSEE has taken, or can be expected to take within a reasonable time, effective steps to achieve practical application of receipt the Licensed Products, Screening Products or Licensed Processes under Article 9; (b) has willfully made a false statement of, or willfully omitted, a material fact in any report required by the license agreement; or (c) has committed a substantial breach of a covenant or agreement contained in the license.
01. Prior to invoking this right, OHSU shall give written notice of to LICENSEE providing LICENSEE specific notice of, and a ninety (90) day opportunity to respond to, OHSU’s concerns as to the ICprevious items (a) to (c). If LICENSEE fails to alleviate OHSU’s unilateral decision concerns as to modify the previous items (a) to (c) or fails to initiate corrective action to OHSU’s satisfaction, OHSU may terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 13.06 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the LicenseeLICENSEE. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) related to patent expenses, due to the IC OHSU shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for If terminated under this AgreementArticle 13, upon sublicensees may elect to convert their sublicenses to direct licenses with OHSU pursuant to Paragraph 4.03.
13.07 Upon termination or expiration of this Agreement, the Licensee shall return LICENSEE shall, at its own expense, forthwith remove, efface or destroy all Licensed Products references to OHSU from all advertising or other materials included within used in the Licensed Patent Rights promotion of LICENSEE’s business or sublicensees and LICENSEE or sublicensees shall not thereafter represent in any manner that it has rights in or to the IC Patent Rights, Licensed Products, Screening Products, or provide the IC with written certification of the destruction thereofLicensed Processes.
(c) If the term of the Agreement is extended at the Licensee’s request13.08 Immediately upon termination, then the IC LICENSEE agrees to return all MICE to OHSU, or to destroy said MICE and the Licensee will negotiate certify in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilledwriting to OHSU that MICE have been destroyed.
7.9 13.09 Paragraphs 4.34.03, 4.47.01, 5.48.04, 6.112.01-6.512.05, 7.6, 7.8 and 7.9 14.11 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 . In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 . The IC shall specifically have the right to terminate this Agreement by written notice if the
(a) the Licensee: has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) or has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 . The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 . The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 . Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 . If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 . Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) . The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) . Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) . If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) ; If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) and The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 . Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC NIH may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee, files a petition in bankruptcy, or has such a petition filed against it, the Licensee shall immediately notify the NIH in writing. Furthermore, to the extent allowed under applicable law, the NIH shall have the right to terminate this Agreement immediately upon the Licensee's receipt of written notice; provided, however, that with respect to any petition filed against the Licensee, the NIH shall not have the right to terminate this Agreement if the Licensee is able to resolve or obtain the dismissal of such petition within [*…***…] following the date of such notice.
13.4 The IC Licensee shall have a unilateral right to terminate this Agreement or any licenses in any Licensed Field of Use in any country or territory by giving the NIH sixty (60) days written notice to that effect.
13.5 The NIH shall specifically have the right to terminate or modify, at its option, this Agreement by written notice to the Licensee, if thethe NIH determines in good faith that the Licensee:
(a) has is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the NIH’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this Agreement that has not been remedied within the ninety (90) days period set forth in Paragraph 13.2 above;
(e) is not keeping Licensed Products or Licensed Processes reasonably available to the public after commercial use commences; or
(f) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived. * ***Confidential Treatment Requested A-276-2014 NIH Patent License Agreement - Exclusive
13.6 In making the determination referenced in Paragraph 13.5, the NIH shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the NIH shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to remedy the items referenced in Paragraphs 13.5(a)-13.5(f). If the Licensee fails to alleviate the NIH’s concerns as to the items referenced in Paragraphs 13.5(a)-13.5(f) within ninety (90) days following written notice from the NIH or otherwise fails to initiate corrective action to the NIH’s satisfaction, the NIH may terminate this Agreement upon written notice to the Licensee.
7.4 13.7 When the public health and safety so require and after written notice to the Licensee providing the Licensee a sixty (60) day opportunity to respond, the NIH shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any of the Licensed Field of Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the Licensed Patent Rights. The IC NIH shall not require the granting of a sublicense unless the responsible applicant has first negotiated in good faith with the Licensee.
13.8 The NIH reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement upon written notice to the Licensee if it is determined that this action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the LicenseeLicensee within ninety (90) days following written notice from the NIH.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.9 Within thirty (30) days of after receipt of written notice of the IC’s NIH's unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC NIH official. The decision of the designated IC NIH official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement 13.10 Within [*…***…] after expiration or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expense, due to the IC NIH shall become immediately due and payable upon termination or expiration. If terminated under this Article 13, sublicensees may elect to convert their sublicenses to direct licenses with the NIH pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall have the right to offer for sale and sell any existing inventory of Licensed Products for […***…] following the effective termination date of this Agreement, subject to the royalty obligations as set forth in Appendix C. After this […***…] period, the Licensee shall return all remaining Licensed Products or other materials included within the Licensed Patent Rights to the IC NIH or provide the IC NIH with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC NIH licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1. * ***Confidential Treatment Requested A-276-6.5, 7.6, 7.8 and 7.9 of this 2014 NIH Patent License Agreement shall survive termination of this Agreement.- Exclusive
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect. A-035-2017 NIH Patent License Agreement--Exclusive Model 10-2015 [Final] [Selecta Biosciences] [3 April 2017]
13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thethe IC determines that the Licensee:
(a) has a. is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights Products or the Licensed Processes;
b. has not achieved the Benchmarks as contemplated by this Agreement; ormay be modified under Paragraph 9.2;
(b) c. has willfully made a false statement of of, or willfully omitted a material fact in its the license application for a license or in any report required by this Agreement;
d. has committed a material breach of a covenant or agreement contained in this Agreement;
e. is not keeping the Licensed Products or the Licensed Processes reasonably available to the public after commercial use commences;
f. cannot reasonably satisfy unmet health and safety needs; or
g. cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived.
7.4 13.6 In making the determination referenced in Paragraph 13.5, the IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(g). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(g) or fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement.
13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a [***] opportunity to respond, the IC shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the Licensed Patent Rights. The IC shall not require the granting of a sublicense unless the responsible applicant has first negotiated in good faith with the Licensee.
13.8 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.9 Within thirty (30) days [***] of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialofficial or designee. The decision of the designated IC official or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.. [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. A-035-2017 NIH Patent License Agreement--Exclusive Model 10-2015 [Final] [Selecta Biosciences] [3 April 2017]
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice 13.10 Within [***] of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement expiration or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expenses, due to the IC shall become immediately due and payable upon termination or expiration[***]. If terminated under this Article 13, sublicensees may elect to convert their sublicenses to direct licenses with the IC pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC PHS may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Actnotice.
7.3 The IC PHS shall specifically have the right to terminate this Agreement by written notice if theLicensee:
(a) has not demonstrated that it is executing the research plan Development Plan submitted with its application for a license and attached herein as Appendix C or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 The IC PHS reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC PHS sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of the IC’s PHS’ unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialDirector of NIH or designee. The decision of the designated IC official NIH Director or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, expiration or termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC PHS licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, and 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.01 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, parties and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.02 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the such default, the IC PHS may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Actnotice.
7.3 The IC 13.03 At least thirty (30) days prior to filing a petition in bankruptcy, Licensee must inform PHS in writing of its intention to file the petition in bankruptcy or of a third party's intention to file an involuntary petition in bankruptcy.
13.04 In the event that Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, Licensee shall specifically immediately notify PHS in writing. Furthermore, PHS shall have the right to terminate this Agreement by giving Licensee written notice if the
(a) has not demonstrated that it notice. Termination of this Agreement is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application upon Licensee's receipt of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreementwritten notice.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The 13.05 Licensee shall have a unilateral right to terminate this Agreement and/or any licenses in any country by giving the IC PHS sixty (60) days days' written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of 13.06 PHS shall specifically have the IC’s unilateral decision right to modify terminate or terminate modify, at its option, this Agreement, if PHS determines that the Licensee: 1) is not executing the Commercial Development Plan submitted with its request for a license and the Licensee maycannot otherwise demonstrate to PHS's satisfaction that the Licensee has taken, consistent with the provisions or can be expected to take within a reasonable time, effective steps to achieve practical application of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes; 2) has not achieved the Benchmarks as may be modified under Paragraph 9.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
Sources: Patent License Agreement (Targeted Genetics Corp /Wa/)
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall extend to the expiration of the last to expire at of the time specified Licensed Patent Rights unless sooner terminated as provided in Appendix B, unless previously terminated under the terms of this Article 713.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC in writing.
13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
13.5 The IC shall specifically have the right to terminate or modify, at its option, this Agreement by written notice Agreement, if thethe IC determines that the Licensee:
(a) has is not demonstrated that it is executing the research plan Commercial Development Plan submitted with its application request for a license or that it has not taken or and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, or can be expected to take, take within a reasonable time, effective steps to achieve the practical application Practical Application of the Licensed Patent Rights as contemplated by this Agreement; orProducts or the Licensed Processes;
(b) has not achieved the Benchmarks as may be modified under Paragraph 9.2;
(c) has willfully made a false statement of of, or willfully omitted a material fact in its the license application for a license or in any report required by this Agreement;
(d) has committed a material breach of a covenant or agreement contained in this
(e) is not keeping the Licensed Products or the Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs; or
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived.
7.4 13.6 In making the determination referenced in Paragraph 13.5, the IC shall take into account the normal course of such commercial development programs conducted with sound and reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(g). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(g) or fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement.
13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a sixty (60) day opportunity to respond, the IC shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the Licensed Patent Rights. The IC shall not require the granting of a sublicense unless the responsible applicant has first negotiated in good faith with the Licensee.
13.8 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate or modify this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 13.9 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialofficial or designee. The decision of the designated IC official or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 13.10 Within ninety (90) days of expiration, expiration or termination or term extension of this Agreement under this Article 713, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) ), and those related to patent expenses, due to the IC shall become immediately due and payable upon termination or expiration. If terminated under this Article 13, sublicensees may elect to convert their sublicenses to direct licenses with the IC pursuant to Paragraph 4.3. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) . The Licensee may not be granted additional IC licenses if this the final reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
Sources: Patent License Agreement
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 13.1 This Agreement is effective when signed by all partieson the Effective Date, unless the provisions of Paragraph 8.8 14.16 are not fulfilled, and shall expire at the time specified in Appendix Btwo (2) years later, unless previously sooner terminated under the terms of as provided in this Article 713. The Parties acknowledge that the initial Agreement term may be extended by a Term Extension Amendment. If the Licensee desires to execute a Term Extension Amendment, they shall provide the IC with written notice to this effect no later than eighteen (18) months following the Effective Date. Such notice shall contain at least i) a Commercial Development Plan, ii) a proposed field of use no broader than the Licensed Fields of Use, and iii) desired performance milestones corresponding to the Commercial Development Plan. Thereafter, the Parties agree to negotiate in good faith and shall use reasonable efforts to execute a Term Extension Amendment prior to the expiration date of the Agreement.
7.2 13.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 13.5, and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The 13.3 In the event that the Licensee becomes insolvent, files a petition in bankruptcy, has such a petition filed against it, determines to file a petition in bankruptcy, or receives notice of a third party's intention to file an involuntary petition in bankruptcy, the Licensee shall immediately notify the IC shall specifically have the right to terminate this Agreement by written notice if the
(a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreementwriting.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 13.4 The Licensee shall have a unilateral right to terminate this Agreement or any licenses in any country or territory by giving the IC sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of 13.5 The IC shall specifically have the IC’s unilateral decision right to modify terminate or terminate modify, at its option, this Agreement, if the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies determines that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.:
(a) The report shall includeis not executing the Commercialization Plan and the Licensee cannot otherwise demonstrate to the IC’s satisfaction that the Licensee has taken, but not or can be limited toexpected to take within a reasonable time, progress on effective steps to achieve the research and development involving the Licensed Patent Rights, Practical Application of the Licensed Products or the Licensed Processes.;
(b) Any royalty payments, including those incurred but has not yet paid (such achieved the Benchmarks as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for may be modified under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.Paragraph 9.2;
(c) If has willfully made a false statement of, or willfully omitted a material fact in the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate license application or in good faith regarding the schedule for reports regarding the information any report required in 7.8(a)by this Agreement;
(d) If the term has committed a material breach of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; andcovenant or agreement contained in this
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilledkeeping the Licensed Products or the Licensed Processes reasonably available to the public after commercial use commences;
(f) cannot reasonably satisfy unmet health and safety needs;
(g) cannot reasonably justify a failure to comply with the domestic production requirement of Paragraph 5.2 unless waived; or
(h) has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under this Agreement.
7.9 Paragraphs 4.313.6 In making the determination referenced in Paragraph 13.5, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 the IC shall consider the normal course of such commercial development programs conducted with sound and 7.9 reasonable business practices and judgment and the annual reports submitted by the Licensee under Paragraph 9.2. Prior to invoking termination or modification of this Agreement under Paragraph 13.5, the IC shall survive termination of give written notice to the Licensee providing the Licensee specific notice of, and a ninety (90) day opportunity to respond to, the IC’s concerns as to the items referenced in 13.5(a)-13.5(h). If the Licensee fails to alleviate the IC’s concerns as to the items referenced in 13.5(a)-13.5(h) or fails to initiate corrective action to the IC’s satisfaction, the IC may terminate this Agreement.
13.7 When the public health and safety so require, and after written notice to the Licensee providing the Licensee a sixty (60) day opportunity to respond, the IC shall have the right to require the Licensee to grant sublicenses to responsible applicants, on reasonable terms, in any Licensed Fields of Use under the Licensed Patent Rights, unless the Licensee can reasonably demonstrate that the granting of the sublicense would not materially increase the availability to the public of the subject matter of the
Appears in 1 contract
Sources: Patent License Agreement
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC shall specifically have the right to terminate this Agreement by written notice if the
(a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 The IC reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of the IC’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC official. The decision of the designated IC official shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessible.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC or provide the IC with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract
TERM, TERMINATION, AND MODIFICATION OF RIGHTS. 7.1 This Agreement is effective when signed by all parties, unless the provisions of Paragraph 8.8 are not fulfilled, and shall expire at the time specified in Appendix B, unless previously terminated under the terms of this Article 7.
7.2 In the event that the Licensee is in default in the performance of any material obligations under this Agreement, including but not limited to the obligations listed in Paragraph 7.3 and if the default has not been remedied within ninety (90) days after the date of notice in writing of the default, the IC NIH may terminate this Agreement by written notice and pursue outstanding royalties owed through procedures provided by the Federal Debt Collection Act.
7.3 The IC NIH shall specifically have the right to terminate this Agreement by written notice if the
(a) has not demonstrated that it is executing the research plan submitted with its application for a license or that it has not taken or cannot be expected to take, within a reasonable time, effective steps to achieve the practical application of the Licensed Patent Rights as contemplated by this Agreement; or
(b) has willfully made a false statement of or willfully omitted a material fact in its application for a license or in any report required by this Agreement.
7.4 The IC NIH reserves the right according to 35 U.S.C. §209(d)(3) to terminate this Agreement if it is determined that this action is necessary to meet the requirements for public use specified by Federal regulations issued after the date of the license and these requirements are not reasonably satisfied by the Licensee.
7.5 The Licensee shall have a unilateral right to terminate this Agreement by giving the IC NIH sixty (60) days written notice to that effect.
7.6 Within thirty (30) days of receipt of written notice of the ICNIH’s unilateral decision to modify or terminate this Agreement, the Licensee may, consistent with the provisions of 37 C.F.R. §404.11, appeal the decision by written submission to the designated IC officialDirector of the NIH or designee. The decision of the designated IC official NIH Director or designee shall be the final agency decision. The Licensee may thereafter exercise any and all administrative or judicial remedies that may be accessibleavailable.
7.7 If either party desires a modification to this Agreement, the parties shall, upon reasonable notice of the proposed modification by the party desiring the change, confer in good faith to determine the desirability of the modification. No modification shall be effective until a written amendment is signed by the signatories to this Agreement or their designees.
7.8 Within ninety (90) days of expiration, termination or term extension of this Agreement under this Article 7, a final report shall be submitted by the Licensee. The Licensee shall send the report to the IC NIH at the Mailing Address for Agreement notices indicated on the Signature Page or electronically mailed to the email address indicated on the Signature Page.
(a) The report shall include, but not be limited to, progress on the research and development involving the Licensed Patent Rights, the Licensed Products or the Licensed Processes.
(b) Any royalty payments, including those incurred but not yet paid (such as the full minimum annual royalty) due to the IC NIH shall become immediately due and payable upon termination or expiration. Unless otherwise specifically provided for under this Agreement, upon termination or expiration of this Agreement, the Licensee shall return all Licensed Products or other materials included within the Licensed Patent Rights to the IC NIH or provide the IC NIH with written certification of the destruction thereof.
(c) If the term of the Agreement is extended at the Licensee’s request, then the IC NIH and the Licensee will negotiate in good faith regarding the schedule for reports regarding the information required in 7.8(a);
(d) If the term of this Agreement is longer than ten (10) years, then the IC NIH may request a status update report after the fifth (5th) year of the Agreement; and
(e) The Licensee may not be granted additional IC NIH licenses if this reporting requirement is not fulfilled.
7.9 Paragraphs 4.3, 4.4, 5.4, 6.1-6.5, 7.6, 7.8 and 7.9 of this Agreement shall survive termination of this Agreement.
Appears in 1 contract