Common use of Transfer of Patents and Additional Rights Clause in Contracts

Transfer of Patents and Additional Rights. 2.1 Seller hereby sells, assigns, transfers and conveys to Purchaser all of Seller’s right, title and interest in and to the Patent Rights. This sale includes all right, title and interest of Seller in all causes of action and enforcement rights for the Patents, including all of its rights to pursue damages, injunctive relief and other remedies for past, current and future infringement of the Patent Rights. This sale is subject to the pre-existing rights of others and existing licenses listed in Exhibit B. Upon receipt of the Consideration, Seller shall execute and deliver to Purchaser the assignment agreements attached hereto as Exhibit C within 30 days and shall provide the U.S. Deliverables and Foreign Deliverables within 45 days. 2.2 Effective upon the Closing, and subject to the provisions of Paragraph 2.3, Purchaser hereby grants to Seller and all Affiliates, a royalty-free, non-exclusive, non-sublicensable perpetual right and license to the Patent Rights (collectively the “Seller License”) to practice the methods and to make, have made, use, distribute, lease, sell, offer for sale, import, export, develop and otherwise dispose of and exploit any of Seller’s or any Affiliates’ processes and products (collectively the “Covered Products”). The seller license shall apply to the reproduction, and subsequent distribution of Covered Products as they are described by the Seller, Affiliates, authorized agents of the Seller, and Affiliates, and third parties in the supply chain for the Seller and any Affiliates, such as a distributor, replicator, VAR, or OEM. The Seller License is non-transferable (by operation of law or otherwise) except as set forth in Paragraph 2.3. 2.3 Without obtaining the consent of Purchaser, and without providing prior notice to Purchaser, Seller, or an Affiliate may assign or otherwise sublicense rights under the Seller License with respect to Covered Products in the context of an assignment to a third party purchaser (a “Permitted Transferee”) of an operating unit, product line, or product business of the Seller or an Affiliate that involves the one or more Covered Products. In the event of each such transfer (a “Transfer”), a Permitted Transferee’s use of the Seller License will be limited to the Covered Products that are of the type produced by the transferred operating unit, product line, or product business before the Transfer. Except for the Covered Products described in the preceding sentence, the Seller License will not extend to any other products, processes or services of a Permitted Transferee. Notwithstanding the foregoing, Seller shall retain Seller License rights in the event of a Transfer.