Common use of Sublicensing Clause in Contracts

Sublicensing. With respect to the rights granted in Sections 4.2(a) and 4.2(d), respectively, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and (ii) ensure that any amendment of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-How.

Appears in 4 contracts

Samples: License Agreement (Viamet Pharmaceuticals Holdings LLC), License Agreement (Viamet Pharmaceuticals Holdings LLC), License Agreement (Viamet Pharmaceuticals Holdings LLC)

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Sublicensing. With respect Company shall have the right to grant Sublicenses under the license granted to Company pursuant to Section 2.1 to its Affiliates, and Company and its Affiliates who are Sublicensees shall have the right to grant Sublicenses under the license granted to Company pursuant to Section 2.1 to third parties; in each case, without TSRI’s consent and solely within the scope of the rights granted in Sections 4.2(a) and 4.2(d)Section 2.1 above; provided, respectivelyhowever, Legacy that neither Company nor any of its Affiliates who are Sublicensees shall only have the right to sublicense authorize or permit any of their respective third party Sublicensees to grant further Sublicenses; and provided, further, that any Sublicense granted by Company or any of such rights Affiliates under this Section 2.3.1 shall be subject in all respects to the extent necessary to enable Legacy to grant the rights set forth applicable provisions contained in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4(including the provisions regarding governmental interest, any Downstream Agreement surviving such reservation of rights, limited warranty, disclaimer, limitation of liability, confidentiality, and rights upon expiration or termination). Ag In addition, any Sublicense granted by Company or any of such Affiliates under this Section 2.3.1 shall contain reasonable and customary provisions regarding development efforts, reporting, audit rights with respect to sales of Partner Products, and indemnity; provided, however, that in the event of a good faith dispute between Company and TSRI as to whether any such provision in a Sublicense agreement is reasonable and customary, TSRI agrees (a) not to exercise its Affiliates shall (itermination rights under Section 12.3(f) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) for breach of the Existing Ag foregoing provisions of this sentence, and (b) not to issue any notice of infringement to the applicable Sublicensee with respect to such Sublicensee’s practice of the Sublicense, unless and until, in each case, the arbitrators appointed pursuant to Section 14.8 have determined that such provision is not reasonable and customary. In the event of a conflict between this Agreement and (ii) ensure that the terms of any amendment of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains consistent with Sublicense agreement, the terms of this AgreementAgreement shall control. Except as expressly permitted by this Section 2.3.1, contains terms reasonably sufficient to enable Legacy and neither Company nor any of its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereundershall grant any Sublicense without TSRI’s prior written consent, and contains terms substantially as protective of Primary, its Affiliates, and provided that TSRI will consider any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees reasonable request for such consent but will have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, withhold consent in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howits discretion.

Appears in 3 contracts

Samples: License Agreement (Receptos, Inc.), License Agreement (Receptos, Inc.), License Agreement (Receptos, Inc.)

Sublicensing. With respect (a) Subject to the rights granted in Sections 4.2(a) terms and 4.2(d)conditions of this Agreement including Licensor’s Right of Negotiation under Section 4.9, respectively, Legacy Licensee shall only have the right to sublicense such grant sublicenses under the license granted to it under Section 2.1 hereof, and to grant other rights to the extent necessary Licensed Compound or Licensed Product, in each case to enable Legacy to grant Affiliates and Third Parties through multiple tiers (each, a “Sublicensee”); provided that [***]. Notwithstanding the rights set forth in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreementforegoing, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement a customary Third Party wholesaler or distributor who does not market or promote a Licensed Product, and (ii) a Third Party contract sales force that details or promotes (but does not book sales of or distribute) a Licensed Product, and where in each of cases (i) and (ii) the Licensed Product is sold under the brand of Licensee or a Related Party (and not a brand of the wholesaler, distributor or contract sales force), shall not be deemed a “Sublicensee” for purposes of this Agreement and this Section 2.3(a) shall not prevent Licensee or its Sublicensees from granting to such wholesalers, distributors and contract sales force rights to conduct such activities with respect to the Licensed Product. Licensee shall ensure that each such Sublicensee is bound by a written agreement, and in the case of any amendment such sublicense granted to a Qualified Sublicensee, that an executed copy of such agreement (as well as an executed copy of any subsequent material amendments thereto), shall be provided to Licensor promptly following the Existing Ag Agreement permitted execution of each such agreement or amendment, [***]. Licensee shall also ensure that each Sublicensee expressly agrees in writing to be bound by all of Licensee’s obligations under this Agreement ensures that to the Existing Ag Agreement remains consistent with extent applicable to such Sublicensee, including without limitation, the terms of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the following provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially (as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained if such Sublicensee were expressly named in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any each such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shallprovision, to the extent available or known to Legacy or any Affiliate thereofSublicensees are not so named therein): Sections 2.2(b) (Licensor Right of Reference and Access); 2.5 (Subcontractors), promptly provide Primary a copy of any license or sublicense executed by Ag Partner2.7 (Improvements), any Affiliate thereof, or any other Legacy Licensee granting any 2.8 (Third Party any rights Technologies); 2.10 (Exclusivity of Efforts); 4.3(b) (Regulatory Cooperation in the Territory), 4.4(b) (Clinical Trials by Licensee Outside the Territory); 5.2 (Responsibility for Supply), but only if such Sublicensee is or has a right to any VDCsbe a Contracting Party; 5.4 (Licensor’s Right to Take Supply of Product Materials from Qualified CMOs), CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, but only if such Sublicensee is or Primary Know-How.has a right to be a Contracting Party or manufacture the Licensed Product; 7.7 (Patent Marking) and 11.5(d) (transition obligations on termination). Finally,

Appears in 2 contracts

Samples: License and Collaboration Agreement (Cullinan Oncology, LLC), License and Collaboration Agreement (Cullinan Oncology, LLC)

Sublicensing. With respect Genentech shall have the right, but not the obligation, to grant sublicenses under the rights licenses granted in Sections 4.2(a7.1(a) and 4.2(d7.1(b) to its Affiliates and Third Parties (including, without limitation, the right of those parties to grant further sublicenses); provided, however, that any such sublicense shall be subject to and in all material respects consistent with the material terms and conditions of this Agreement. Such sublicenses may only be granted to the extent that Genentech or the sublicensee deems that the sublicenses are reasonably needed for the development and commercialization of Collaboration Products and the maximization of sales. The sublicenses between Genentech and each permitted sublicensee (and each sublicensee of Genentech and its permitted further sublicensees) shall be subject to a written sublicense agreement and shall be consistent with and not in violation of this Agreement and all of the applicable terms, conditions, obligations, restrictions and other covenants of the Existing License Agreements that protect or benefit The Regents’ (and, if applicable, the U.S. Government’s and other sponsors’) rights and interests. Genentech and its Affiliates shall insure that each sublicense agreement and further sublicense agreement includes or requires: (i) appropriate audited and auditable reporting from each sublicensee and each sublicensee’s further sublicensees to establish all amounts owed under this Agreement; (ii) that each sublicense and each further sublicense include an indemnity of Genentech, indemnification procedures and insurance coverages that are comparable to those which Genentech provides to Renovis hereunder; (iii) that each sublicensee and further sublicensee provide Genentech with all necessary reports and documentation sufficient to permit Genentech to comply with the reporting obligations of this Agreement, including without limitation Section 6.3, Section 9.1 and the audit obligations set forth in Section 9.4 of this Agreement; (iv) only with respect to those agreements that sublicense a Patent licensed under the Berkeley License and solely as necessary to comply with Section 4.1(a) of the Berkeley License, a statement setting forth the date upon which Renovis’ exclusive rights, privileges and licenses under the Berkeley License will expire; (v) only with respect to those agreements that sublicense a Patent licensed under the Berkeley License and solely as necessary to comply with Section 4.1(b) of the Berkeley License, a statement that, to the extent applicable, the non-payment obligations of the Berkeley License will be binding upon the sublicensee, subject to Section 4.5 of the Berkeley License; and (vi) only with respect to those agreements that sublicense a Patent licensed under the Berkeley License and solely as necessary to comply with Section 4.1(c) of the Berkeley License, a statement that the payment obligations under such sublicense may be at higher rates than provided in the Berkeley License. A copy of the Existing License Agreements, with redactions approved by Renovis, shall be attached to each sublicense agreement. Within thirty (30) days of the effective date of each sublicense granted by Genentech or its Affiliates, Genentech shall provide Renovis with a copy of such sublicense, with redactions for provisions that do not pertain to the licensed rights granted hereunder. Within thirty (30) days of the effective date of each sublicense granted by Genentech’s or its Affiliates’ sublicensees to a further sublicensee, Genentech shall provide Renovis with notice of the identity of each further sublicensee, a summary of each such sublicense (such summary to include the scope and restrictions of the sublicensed rights, the term of the sublicensed rights, confirmation that the reporting, audit and indemnification obligations are consistent with the requirements of this Agreement, evidence that the definition of net sales in such sublicense is consistent with the definition of Net Sales provided in this Agreement and such additional assurances with respect to such sublicenses as are reasonably requested by Renovis. Genentech shall summarize and submit to Renovis appropriate audited and auditable reporting from each sublicensee and each sublicensee’s further sublicensees to establish all amounts owed under this Agreement and from which Renovis may determine all amounts owed to the Regents under the Existing License Agreements. Genentech and its Affiliates shall enforce all of the provisions set forth in this Section with respect to its sublicensees and shall require its sublicensees to enforce all of the provisions set forth in this Section with respect to their sublicensees. Notwithstanding anything in this Section 7.2(c) to the contrary, solely with respect to those Renovis Patents licensed to Renovis under the Oakland License (the “Oakland Patents”), respectively, Legacy Genentech shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(athree (3) and Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and (ii) ensure that any amendment of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations sublicenses under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How Oakland Patents with respect to any each Genentech Product. In addition, each such sublicense by Genentech shall limit the number of further sublicenses that can be granted under the foregoingOakland Patents to three (3) additional sublicenses with respect to each Genentech Product. Legacy shallExcept as explicitly provided for under this Section 7.2(c), to the extent available no further sublicenses may be granted by Genentech or known to Legacy its Affiliates or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howsublicensees.

Appears in 2 contracts

Samples: And License Agreement (Renovis Inc), And License Agreement (Renovis Inc)

Sublicensing. With respect Egalet may grant sublicenses of the licenses granted to Egalet under Section 7.1, subject to Acura’s prior written consent for a sublicense in the rights United States to a Third Party to market or sell the Product (other than sublicenses granted in Sections 4.2(a) and 4.2(dto Third Parties acting as distributors or wholesalers or to Third Parties providing products or non-marketing/selling services to or on behalf of Egalet or its Affiliates), respectivelysuch consent not to be unreasonably withheld, Legacy shall only have delayed or conditioned, except in the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth case of [*****] which consent Acura may withhold in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreementits sole discretion (a “U.S. Sublicensee”); provided, respectively (orhowever, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall that (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) Egalet shall submit a copy of the Existing Ag Agreement draft of each such sublicense agreement with a U.S. Sublicensee to Acura at least [*****] before execution, which copy may be redacted as to financial information and Third Party confidential information not directly related to Products; (ii) ensure that Egalet shall submit a copy of each such executed sublicense agreement (other than sublicenses granted to Third Parties acting as distributors or wholesalers or to Third Parties providing products or non-marketing/selling services to or on behalf of Egalet or its Affiliates) to Acura, which copy may be redacted as to financial information and Third Party confidential information not directly related to Product; (iii) Egalet shall guarantee and be responsible for the making of all payments due, and the making of any amendment reports under this Agreement, with respect to sales of the Existing Ag Agreement permitted Product by this Agreement ensures that the Existing Ag Agreement remains consistent its Affiliates or sublicensees and their compliance with the all applicable terms of this Agreement; (iv) each Affiliate or sublicensee agrees in writing to maintain appropriate books and records relating to the Product and to permit Acura to review such books and records and visit such facilities for such review, contains terms reasonably sufficient pursuant to enable Legacy and its Affiliates to comply with the provisions of this Agreement Sections 5.2.5 and satisfy their obligations hereunder, 6.11; (v) such sublicense agreement requires it to continue in full force and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as effect in accordance with the terms contained in this Agreement are protective and conditions of Primary, its Affiliates, the Primary Patent Rights, and respective sublicense agreement upon the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production termination of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and permits Egalet to assign to Acura such sublicense agreements; and (vi) such sublicense agreement requires such sublicensee to observe all Patent Rights other applicable terms of this Agreement. No sublicense granted by Egalet shall be valid unless it has complied with this Section 7.2. ***** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Know-How Exchange Commission; omitted portions have been separately filed with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-HowCommission.

Appears in 1 contract

Samples: Collaboration and License Agreement (Acura Pharmaceuticals, Inc)

Sublicensing. With The license contained in Section 2.1(a) includes the right to grant sublicenses in the PV Field only to Third Parties other than TISICS Competitors (each Third Party sublicensee, a “ESLR1 Sublicensee”), provided that ESLR1 shall remain responsible for the performance of the ESLR1 Sublicensees hereunder and any such sublicense granted by ESLR1 shall be pursuant to a written agreement that is at least as protective of TISICS, with respect to the rights granted license contained in Sections 4.2(a) and 4.2(dSection 2.1(a), respectivelyas this Agreement and provided that TISICS has consented to the granting of such sublicense, Legacy such consent not to be unreasonably withheld or delayed, provided further that ESLR1 may grant Evergreen and Evergreen’s Affiliates a sublicense without TISICS’ consent or any requirement of a written agreement (but subject to prior written notice of such sub-license being given to TISICS). ESLR1 Sublicensees shall only not have the right to grant any further sublicenses under any such sublicense such rights to granted by ESLR1. The terms of the extent necessary to enable Legacy to agreement with ESLR1 Sublicensees will expressly prohibit in writing all of its ESLR1 Sublicensees from exercising the license grant the rights set forth contained in Section 5.1(a2.1(a) and (but not any other sublicenses such ESLR1 Sublicensee may be granted, for example, under the Composite Field License Agreement or Other Fields License Agreement) outside the PV Field. Subject to Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.42.5, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies purchaser of SiC Fiber in the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and (ii) ensure that any amendment of the Existing Ag Agreement permitted PV Field shall, by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms operation of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have receive the right to subcontract sell, offer for sale, resell, offer for resale, import and otherwise use such SiC Fiber in the production PV Field by operation of a Legacy Royalty Product to a third party without approval of Primarythe patent exhaustion/first sale doctrine, provided that any such subcontract but otherwise shall contain confidentialityreceive no licenses, intellectual property, and sublicenses or other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations rights under the Existing Ag Agreement (TISICS IP by virtue of its purchase of SiC Fiber in the PV Field from ESLR1 or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-HowESLR1 Sublicensee.

Appears in 1 contract

Samples: License Agreement (Evergreen Solar Inc)

Sublicensing. With respect to Partner may sublicense the rights granted in Sections 4.2(a) and 4.2(d), respectively, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall 2.1 to Third Parties provided that (i) use Commercially Reasonable Efforts Ironwood consents in writing to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and proposed sublicense prior to execution, which consent Ironwood may not unreasonably withhold, (ii) ensure that any amendment Partner provides Ironwood a copy of such proposed sublicense prior to execution thereof, and (iii) the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains terms of such sublicense are consistent with the terms of this Agreement, contains terms reasonably sufficient . [**] = Portions of this exhibit have been omitted pursuant to enable Legacy and its Affiliates to comply a confidential treatment request. An unredacted version of this exhibit has been filed separately with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by Commission. Notwithstanding the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of Partner will not under any circumstances grant a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any sublicense of the foregoingrights granted under Section 2.1 in any Major Country, other than to contract sales organizations under agreements pursuant to which Partner records all sales of Product derived from the efforts of such contract sales organization(s). Legacy shall, to Partner will notify Ironwood of the extent available or known to Legacy or any Affiliate thereof, promptly execution of each sublicense hereunder and provide Primary a copy of any such executed sublicense to Ironwood promptly following execution thereof. In addition, each Party will require any licensee or Sublicensee, whether within or outside the Territory, of Technology with respect to the Licensed Compound or the Product, to cross-license or sublicense executed otherwise transfer or convey back to the granting Party all Technology which such licensee or Sublicensee may develop or acquire so that any of such Technology will be Controlled by Ag Partnerthe granting Party for purposes and to the extent of the licenses to the other Party provided by Sections 2.1, any Affiliate thereof2.2, and 2.3 above and to transfer ownership of all Regulatory Submissions and Regulatory Approvals pertaining to the Licensed Compound or any other Legacy Licensee granting any Third Party any rights Product to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howupon a termination of this Agreement to the extent necessary for Partner to assign to Ironwood such Regulatory Submissions and Regulatory Approvals under Section 8.2.3(c) hereof.

Appears in 1 contract

Samples: License Agreement (Ironwood Pharmaceuticals Inc)

Sublicensing. With respect to the rights granted in Sections 4.2(aLICENSEE (and its Affiliate sublicensees) and 4.2(d), respectively, Legacy shall only have the right to sublicense such the rights under the Patents, Improvements and Know-How to its Affiliates without the prior approval of RUSH. In addition, upon the prior written approval of RUSH, which approval may not be unreasonably withheld, delayed or conditioned, LICENSEE may sublicense the rights under the Patents, Portions of this Exhibit, indicated by the xxxx “[***],” were omitted and have been filed separately with the Secretary of the Commission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 406 of the Securities Act of 1933, as amended. CONFIDENTIAL TREATMENT REQUESTED Improvements and Know-how to Third Parties. To the extent necessary a sublicense to enable Legacy a Third Party is approved by RUSH, LICENSEE shall pay to grant the rights RUSH, in lieu of any royalty payment obligation set forth in Section 5.1(a) and Section 5.1(b6.3.1 or 6.3.2 hereof, [***] percent ([***]%) of the Existing Ag Agreement, respectively (or, upon any termination sublicensing revenue received from such Third Party in respect of such sublicense. Such sublicense revenue means any consideration paid to LICENSEE from a Third Party sublicensee of LICENSEE in consideration of the Existing Ag Agreement not triggering termination grant of this Agreement sublicenses under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall (i) use Commercially Reasonable Efforts the rights granted LICENSEE pursuant to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and (ii) ensure that any amendment of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms of this Agreement. Such consideration shall include, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunderbut not be limited to, and contains terms substantially as protective of Primaryroyalty payments, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How equity investments with respect to any amounts in excess of the foregoingfair market value of such equity, milestone payments, up-front or other lump sum payments and payments for research and development services. Legacy shallIf LICENSEE receives anything of value in lieu of cash payments in consideration for the sublicense of the Patents, Improvements and/or Know-how to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights sublicensee, then LICENSEE shall assess a sublicense revenue value on such transaction based on the fair market value of such payment. Revenue as described herein does not include revenue generated from services or revenues from sales or licensing of products that are not within the scope of the Technology. In the event this Section 6.3.3 becomes operative such that LICENSEE is obligated to any VDCspay RUSH a portion of sublicensing fee revenue in lieu of royalty payments, CDCsthen, Viamet Derived Productsin addition to the sublicensing fee payments contemplated by this Section 6.3.3, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-How.LICENSEE shall also make the following payments to RUSH:

Appears in 1 contract

Samples: License Agreement (Neothetics, Inc.)

Sublicensing. With respect The licenses contained in Sections 7.1.1(b) and (c) and 7.1.2(a), (b) and (c) shall be sublicensable (through multiple tiers) in connection with the Development, Manufacturing and/or Commercialization of any [***] (subject to the rights granted in Sections 4.2(a) and 4.2(dStandalone Product Limitation), respectivelyand Assigned Software, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreementas applicable, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall provided that (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth material DexCom Background IP and/or [***] is included in Section 5.1(c) of the Existing Ag Agreement such sublicense, and (ii) ensure DexCom retains a material involvement in the Development, Manufacturing and/or Commercialization of such [***], as applicable, which sublicense shall not be effective until DexCom delivers to Verily an executed copy of any such sublicense agreement, provided that DexCom may reasonably redact from any amendment such sublicense agreement any confidential information of DexCom or the applicable sublicensee, [***] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS AND ASTERISKS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED INFORMATION. EXECUTION COPY and further provided that upon such delivery to Verily, the sublicense will be deemed effective as of the Existing Ag Agreement permitted date specified in the applicable sublicense agreement. Delivery to Verily of a standard sublicense template used by this Agreement ensures that the Existing Ag Agreement remains consistent DexCom with the terms of this Agreementmultiple customers, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensedresellers, or controlled by distributors in the ordinary course of its business will be sufficient for purposes of the delivery condition set forth in the preceding sentence. Without limiting the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, Parties will use good faith efforts to implement shared procedures to limit the Primary Patent Rights, and administrative burdens associated with complying with the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howforegoing delivery obligation.

Appears in 1 contract

Samples: Collaboration and License Agreement (Dexcom Inc)

Sublicensing. With respect to the rights granted in Sections 4.2(a) and 4.2(d), respectively, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) Sublicenses of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement licenses granted to River’s Edge under Section 12.42.1.1 may be granted by River’s Edge; provided, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates however, in all cases, no sublicense granted by River’s Edge pursuant to this Section 2.2 shall be valid unless: (i) use Commercially Reasonable Efforts River’s Edge shall submit the proposed sublicense or distribution agreement to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and DUSA for written approval prior to execution, which approval shall not be unreasonably withheld or delayed; (ii) ensure that River’s Edge shall guarantee and be responsible for, as applicable, the performance of, or the making of all payments due and the making of any amendment of the Existing Ag Agreement permitted by reports under this Agreement ensures that with respect to sales of Licensed Products by its Affiliates and Sublicensees and, in each case, the Existing Ag Agreement remains consistent Affiliate’s and Sublicensee’s compliance with the all applicable terms of this Agreement; (iii) such sublicense agreement shall provide that the Sublicensee shall be jointly and severally liable with River’s Edge for any royalty payments due to DUSA under this Agreement and shall contain the consent to jurisdiction and governing law provisions of this Agreement with respect to the royalty payment obligations; and (iv) as applicable, contains terms reasonably sufficient each Affiliate or Sublicensee agrees in writing to enable Legacy maintain books and records and permit DUSA to review such books and records pursuant to the relevant provisions, and to observe all other applicable terms, of this Agreement. River’s Edge shall promptly provide DUSA with notice of any sublicense granted pursuant to this Section 2.2, and provide a copy of the applicable agreement to DUSA upon its Affiliates request. Notwithstanding anything here and to comply the contrary, River’s Edge may enter into a sublicense agreement with Tiber Laboratories, LLC (“Tiber”) to allow Tiber to market the Licensed Products under Tiber’s label and NDC Number, provided that such agreement binds Tiber to all of the provisions of this Agreement Section 2.2; and satisfy their obligations hereunderfurther provided, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any Tiber may not assign such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereofagreement, or any other Legacy Licensee granting any Third Party any rights to any VDCsobligations thereunder, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howwithout DUSA’s prior written consent.

Appears in 1 contract

Samples: Settlement Agreement and Mutual Release (Dusa Pharmaceuticals Inc)

Sublicensing. With respect to the rights granted in Sections 4.2(a) and 4.2(d), respectively, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to Alpharma may grant the rights set forth in Section 5.1(a) and Section 5.1(b) sublicenses of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement licenses granted to Alpharma under Section 12.47.1; provided, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates however, that no sublicense granted by Alpharma pursuant to this Section 7.2 shall be valid unless: (i) use Commercially Reasonable Efforts Alpharma shall submit all proposed sublicense agreements to ensure that any Downstream Agreement satisfies the requirements set forth Tris for approval, which approval shall not be unreasonably withheld or delayed and which approval shall not be required in Section 5.1(c) connection with a sublicense to an Affiliate of the Existing Ag Agreement and Alpharma; (ii) ensure that Alpharma shall guarantee and be responsible for the making of all payments due, and the making of any amendment reports under this Agreement, with respect to sales of the Existing Ag Agreement permitted Products by this Agreement ensures that the Existing Ag Agreement remains consistent its Affiliates or sublicensees and their compliance with the all applicable terms of this Agreement, contains terms reasonably sufficient ; (iii) each Affiliate or sublicensee agrees in writing to enable Legacy maintain books and its Affiliates records and permit licensor to comply review such books and records pursuant to the relevant provisions; (iv) such sublicense agreement requires it to continue in full force and effect in accordance with the provisions terms and conditions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective the respective sublicense agreement upon the termination of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, and permits licensee to assign to licensor such sublicense agreements; and (v) such sublicense agreement requires such sublicensee to observe all other applicable terms of this Agreement. In addition, no sublicense granted by Alpharma pursuant to this Section 7.2 shall be valid unless each such Affiliate or sublicensee agrees in VDCswriting to maintain appropriate records and permit Tris, CDCsjointly with Alpharma to inspect such records and visit such facilities pursuant to the relevant provisions of Sections 5.2.8, Viamet Derived Products, Ag Partner Collaboration Derived Products6.5 and 6.6, and to observe all Patent Rights and Know-How with respect to any other applicable terms, of the foregoingthis Agreement. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, Alpharma shall promptly provide Primary Tris with notice of any sublicense granted pursuant to this Section 7.2, and provide a copy of any license or the executed sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights agreement to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-HowTris upon its request.

Appears in 1 contract

Samples: Development and License Agreement (Alpharma Inc)

Sublicensing. With respect Subject to the rights granted in Sections 4.2(aroyalty payments (if any) and 4.2(d), respectively, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a3(a) and Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner other terms and its Affiliates shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements conditions set forth in this LICENSE AGREEMENT, the licenses granted under this Section 5.1(c2(a) and the license to be granted upon GEVO’s exercise of the Existing Ag Agreement option under Section 2(c) include the limited right to sublicense to GEVO’s AFFILIATES and THIRD PARTIES, except that no such AFFILIATES or other GEVO SUBLICENSEES shall be permitted to (x) make, have made, use, offer to sell, sell, distribute or transfer, import or export BIOCATALYSTS under any sublicense (other than for purposes of (A) making BIOBUTANOL for LEGAL_US_W # 82848909.3 8 distribution by or for GEVO in the GEVO FIELDS OF USE or the DIRECT FUEL BLENDING field in accordance with this Section 2(a) or (B) performing research and development services for GEVO in accordance with Section 2(a)(x)), (y) have made BIOBUTANOL under any sublicense, or (z) grant any further sublicense (except that (1) directly or indirectly wholly owned subsidiaries of GEVO and (ii2) ensure that PERSONS under direct or indirect common control (as defined in the definition of “AFFILIATES”) with GEVO shall be permitted to further sublicense, to the same extent GEVO is permitted to sublicense under this Section 2(a)(vi)). GEVO shall be liable and responsible for any amendment breach of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the any provisions of this Agreement LICENSE AGREEMENT and satisfy their obligations hereunder, and contains terms substantially as protective other actions or omissions relating to this LICENSE AGREEMENT by any of Primaryits MANUFACTURERS, its AffiliatesAFFILIATES or other GEVO SUBLICENSEES, and any successor to the same extent as if such breach or assignee thereofaction or omission were by GEVO itself, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective including for purposes of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of PrimarySection 9; except that, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent GEVO is in compliance with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream AgreementSection 4(a), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to GEVO shall not be liable or responsible for any breach of the foregoing. Legacy shall, to the extent available Section 4(a) by its AFFILIATES or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-HowGEVO SUBLICENSEES.

Appears in 1 contract

Samples: License Agreement (Gevo, Inc.)

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Sublicensing. With respect 3.1. Licensee may not sublicense its rights under this Agreement to any other Person without the prior written consent of Licensor, except that Licensee may sublicense the license rights granted in Sections 4.2(a) and 4.2(d), respectively, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement it under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall Article 2 without Licensor’s prior written consent to: (i) use Commercially Reasonable Efforts its Affiliates that are Controlled by Licensee (but which shall in no case include any Prohibited Persons or be subject to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) Part 2 of the Existing Ag Agreement and Schedule 16.5), (ii) ensure that any amendment those manufacturers set forth on Exhibit E who are engaged at such time to manufacture the Licensed Products on Licensee’s behalf, and (iii) those distributors set forth on Exhibit E who are engaged at such time to distribute the Licensed Products on Licensee’s behalf, in each case of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement foregoing (or any Downstream Agreementii) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreementiii), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available Licensee and such manufacturers or distributors, as applicable, are parties to a Contract which includes substantially the same terms (other than pricing terms) that exist in those Contracts between the Transferred Companies and such third party manufacturers or distributors, as applicable, in existence as of the Effective Date. Any new third party manufacturers or distributors not otherwise provided for under this Section 3.1 may be added to Exhibit E if they (x) are approved in advance by Licensor, such approval not to be unreasonably withheld, conditioned or delayed, or (y) subject in all respects to compliance with this Section 3, are of the same quality, reputation and solvency in all material respects as the manufacturers or distributors already set forth on Exhibit E. Notwithstanding the foregoing, Licensee may not provide Licensed Products to any distributors known by Licensee to Legacy (i) intentionally redistribute, or (ii) repeatedly redistribute, such Licensed Products outside the Territory and to the extent that Licensee becomes aware that any Affiliate thereofdistributors are distributing Licensed Products outside the Territory, Licensee shall promptly provide Primary notify Licensor and, if applicable, stop selling Licensed Products to any such distributors. Notwithstanding anything else in this Agreement, Licensee shall not sublicense its rights under this Agreement to any Prohibited Person and shall not attempt any sublicense subject to Part 2 of Schedule 16.5, and any attempted sublicense to a copy of any license Prohibited Person or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights subject to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-HowPart 2 of Schedule 16.5 shall be deemed null and void.

Appears in 1 contract

Samples: Stock and Asset Purchase Agreement (Campbell Soup Co)

Sublicensing. With respect to Licensee may sublicense the rights granted in Sections 4.2(a) and 4.2(d)to it under Section 2.1 (i.e., respectivelyabsent Licensor’s express prior written consent, Legacy shall only no sublicensee will have the any further right to grant sublicenses) to third party sublicensees, so long as: (a) the sublicense such rights to is royalty-bearing and in writing; (b) the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) terms of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and (ii) ensure that any amendment of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains sublicense agreement are consistent with the terms and conditions of this Agreement, contains terms including, without limitation, Section 7.7; (c) the sublicense was negotiated by Licensee in good faith, for a proper commercial purpose and on reasonable arm’s-length commercial terms; (d) the sublicense agreement names the Licensors as third-party beneficiaries thereof; (e) the sublicensee has, or has the ability to acquire, adequate resources (including scientific, technical and financial) to perform its obligations under such sublicense, as reasonably sufficient to enable Legacy determined by Licensee at the time of entry into the sublicense; and its Affiliates to comply with (f) a complete, confidential copy of the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, sublicense agreement and any successor amendments thereto are provided to the Licensors within thirty (30) days of the execution of said sublicense agreement or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentialityamendments thereto. In each case, intellectual property, and other provisions reasonably consistent with those Licensee will be responsible for the performance of this Agreement and sufficient its sublicensees relevant to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCsincluding, CDCswithout limitation, Viamet Derived Productsmaking any payments provided for hereunder. Subject to Section 8.6, Ag Partner Collaboration Derived ProductsLicensee will provide the Licensors with a complete, confidential copy of each such sublicense agreement executed by Licensee and any amendments thereto, and all Patent Rights and Know-How with respect to any will promptly notify the Licensors of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy termination of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howsuch sublicense.

Appears in 1 contract

Samples: Exclusive License Agreement (Brooklyn ImmunoTherapeutics, Inc.)

Sublicensing. With 2.2.1. Granting Licensee shall have the right to provide TSRI with one or more lists of potential sublicensees for preapproval, which preapproval shall not be unreasonably withheld or delayed by TSRI and which preapproval shall only be effective for [**] years. In connection with providing any list of potential sublicensees for preapproval, Licensee shall also indicate the expected indication(s) for Licensed Products for which it may be seeking sublicensees, which indication(s) is for informational purposes only and shall not be binding or a restriction or [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of the exhibit has been filed separately with the Commission. condition to Licensee’s ability or right to sublicense. Licensee shall have the right to grant sublicenses with respect to the rights granted conferred upon Licensee under this Agreement to any party on the list(s) who has been preapproved within the last [**] years; provided, however, that any such sublicense shall be subject in all respects to the provisions contained in this Agreement (excluding the payments due under Sections 4.2(a3 and 4, which are Licensee’s responsibility). Licensee’s sublicensee(s) and 4.2(d), respectively, Legacy shall only not have the right to further sublicense such without TSRI’s prior written consent, which consent shall not be unreasonably withheld or delayed. TSRI shall consider requests by Licensee’s sublicensee(s) to further sublicense on a case-by-case basis, which consideration shall take into account (a) the identity of the proposed sublicensee and (b) a review of selected provisions (or a redacted form) of an unexecuted draft of the proposed further sublicense agreement to confirm that TSRI’s rights are properly protected with respect to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) scope of the Existing Ag Agreementsublicense (Section 2.1), respectively (orthe corollary provisions of Section 2.4, upon any termination of the Existing Ag Agreement not triggering termination 2.5 and 9 of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner in the further sublicense agreement and its Affiliates shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and (ii) ensure that any amendment of the Existing Ag Agreement permitted by this Agreement ensures requirement that the Existing Ag Agreement remains consistent with the terms of this Agreement, contains terms reasonably sufficient further sublicense is subject in all respects to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement (excluding the payments due under Sections 3 and 4, which are protective of Primary, its Affiliates, Licensee’s responsibility). Any further sublicense agreement is subject in all respects to the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of contained in this Agreement (excluding the payments due under Sections 3 and sufficient 4, which are Licensee’s responsibility). Licensee shall forward to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary TSRI a copy of any license and all fully executed sublicense agreements (including further sublicenses by a sublicensee) within [**] days of execution, which copies may be redacted (except for the financial terms related to Sublicense Revenue) to preserve confidentiality. Notwithstanding the foregoing, Licensee and its preapproved sublicensees (including their further sublicensees to which TSRI has given consent) may sublicense their Affiliates without the preapproval or consent of TSRI and need not provide TSRI a copy of any executed sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howagreement with their Affiliates.

Appears in 1 contract

Samples: License Agreement (Verastem, Inc.)

Sublicensing. With respect Egalet may grant sublicenses of the licenses granted to Egalet under Section 7.1, subject to Acura’s prior written consent for a sublicense in the rights United States to a Third Party to market or sell the Product (other than sublicenses granted in Sections 4.2(a) and 4.2(dto Third Parties acting as distributors or wholesalers or to Third Parties providing products or non-marketing/selling services to or on behalf of Egalet or its Affiliates), respectivelysuch consent not to be unreasonably withheld, Legacy shall only have delayed or conditioned, except in the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth case of [*****] which consent Acura may withhold in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreementits sole discretion (a “U.S. Sublicensee”); provided, respectively (orhowever, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall that (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) Egalet shall submit a copy of the Existing Ag Agreement draft of each such sublicense agreement with a U.S. Sublicensee to Acura at least [*****] before execution, which copy may be redacted as to financial information and Third Party confidential information not directly related to Products; (ii) ensure that Egalet shall submit a copy of each such executed sublicense agreement (other than sublicenses granted to Third Parties acting as distributors or wholesalers or to Third Parties providing products or non-marketing/selling services to or on behalf of Egalet or its Affiliates) to Acura, which copy may be redacted as to financial information and Third Party confidential information not directly related to Product; (iii) Egalet shall guarantee and be responsible for the making of all payments due, and the making of any amendment reports under this Agreement, with respect to sales of the Existing Ag Agreement permitted Product by this Agreement ensures that the Existing Ag Agreement remains consistent its Affiliates or sublicensees and their compliance with the all applicable terms of this Agreement; (iv) each Affiliate or sublicensee agrees in writing to maintain appropriate books and records relating to the Product and to permit Acura to review such books and records and visit such facilities for such review, contains terms reasonably sufficient pursuant to enable Legacy and its Affiliates to comply with the provisions of this Agreement Sections 5.2.5 and satisfy their obligations hereunder, 6.11; (v) such sublicense agreement requires it to continue in full force and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as effect in accordance with the terms contained in this Agreement are protective and conditions of Primary, its Affiliates, the Primary Patent Rights, and respective sublicense agreement upon the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production termination of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and permits Egalet to assign to Acura such sublicense agreements; and (vi) such sublicense agreement requires such sublicensee to observe all Patent Rights other applicable terms of this Agreement. No sublicense granted by Egalet shall be valid unless it has complied with this Section 7.2. ***** Confidential treatment requested pursuant to a request for confidential treatment filed with the Securities and Know-How Exchange Commission; omitted portions have been separately filed with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-How.Commission

Appears in 1 contract

Samples: Collaboration and License Agreement (Egalet Corp)

Sublicensing. With respect On an Identified Opportunity-by-Identified Opportunity basis, Licensee may sublicense the rights granted to it under Section 2A.1 to third party sublicensees (each such third party sublicensee, an “Opportunity Sublicensee”, such sublicense, an “Opportunity Sublicense”) during the Identification Period, so long as: (a) the Opportunity Sublicense is royalty-bearing and in writing; (b) the terms of the Opportunity Sublicense include customary terms for such types of sublicenses, including, without limitation, terms that are substantially consistent (subject to conforming revisions to refer to the rights granted in licensed to and products to be Exploited by the applicable Opportunity Sublicensee) with the terms and conditions of Sections 4.2(a) and 4.2(d3, 5.3.7, 5.4 (if payments are based on ongoing product sales), respectively5.5, Legacy shall only have 5.6, 6.3, 6.4, 6.5, 7.6, and 7.10 of this Agreement, and, if the right to sublicense such rights to applicable Opportunity Sublicense is an exclusive license granted for the extent necessary to enable Legacy to grant purpose of Exploitation of Opportunity Products, include the rights set forth in Section 5.1(a) and Section 5.1(b) obligation of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall (i) Opportunity Sublicensee to use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies Exploit one or more Opportunity Products; (c) the requirements set forth Opportunity Sublicense was negotiated by Licensee in Section 5.1(cgood faith, for a proper purpose and on reasonable arm’s-length commercial terms; (d) the Opportunity Sublicense names Factor as a third-party beneficiary thereof; (e) the Opportunity Sublicensee has, or has the ability to acquire, adequate resources (including scientific, technical and financial) to perform its obligations under such Opportunity Sublicense, as reasonably determined by Licensee at the time of entry into the Opportunity Sublicense; and (f) a complete, confidential copy of the Existing Ag Agreement Opportunity Sublicense agreement and any amendments thereto are provided to Factor within thirty (ii30) ensure that any amendment days of the Existing Ag Agreement permitted execution of said Opportunity Sublicense agreement or any such amendments thereto. In each case, Licensee will be responsible for enforcing the performance of the Opportunity Sublicensees under the Opportunity Sublicenses, including, without limitation, making any payments provided for hereunder. Subject to Section 8.6, Licensee will provide Factor with a complete, confidential copy of each such Opportunity Sublicense agreement executed by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms of this Agreement, contains terms reasonably sufficient to enable Legacy Licensee and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunderany amendments thereto, and contains terms substantially as protective will promptly notify Factor of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective termination of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any of the foregoing. Legacy shall, to the extent available or known to Legacy or any Affiliate thereof, promptly provide Primary a copy of any license or sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting any Third Party any rights to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-HowOpportunity Sublicense.

Appears in 1 contract

Samples: Exclusive License Agreement (Eterna Therapeutics Inc.)

Sublicensing. With respect to the rights granted in Sections 4.2(a) and 4.2(d), respectively, Legacy GSK shall only have the right to sublicense such rights grant sublicenses, through multiple tiers of sublicensees, of the license granted to GSK by Mersana under Section 4.1 (License Grant to GSK) to its Affiliates and Third Parties (each, a “Sublicensee”); provided that, prior to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) expiration of the Existing Ag Agreement[**] and, respectively if Mersana exercises the [**], GSK may not, without the prior written consent of Mersana (orsuch consent not to be unreasonably withheld, upon conditioned or delayed), grant a sublicense to a Third Party to Develop or Commercialize the Licensed Compound or any termination Licensed Product in the Shared Territory, except for customary sublicenses and subcontracts granted in the ordinary course of business in the Existing Ag Agreement not triggering termination Shared Territory (e.g., sublicenses and subcontracts to CMOs, contract research organizations, distributors and other Third Parties performing services on behalf of this Agreement under Section 12.4, GSK or any Downstream Agreement surviving such terminationof its Affiliates). Ag Partner Any and its Affiliates all sublicenses shall (i) use Commercially Reasonable Efforts to ensure that any Downstream Agreement satisfies be in writing and shall require the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and (ii) ensure that any amendment of the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains consistent with the terms of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates Sublicensee to comply with the provisions applicable terms and conditions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-HowAgreement. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with With respect to any of the foregoing. Legacy shallsuch sublicense for which Xxxxxxx’s prior written consent is required pursuant to this Section 4.3 (Sublicensing), to the extent available or known to Legacy or any Affiliate thereof, promptly GSK shall provide Primary Mersana with a copy of any license or such sublicense executed by Ag Partner, any Affiliate thereof, or any other Legacy Licensee granting agreement with any Third Party within [**] following the execution of such sublicense agreement (which shall be GSK’s Confidential Information); except that any such copy may be reasonably redacted to remove any confidential, proprietary, or competitively sensitive information, as long as such redactions do not adversely affect Xxxxxxx’s ability to understand the scope of rights sublicensed or to confirm that such sublicense agreement complies with all applicable terms and conditions of this Agreement. With respect to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patentsother such sublicense by GSK or any of its Affiliates to a Third Party for which GSK is not required to deliver a copy pursuant to this Section 4.3 (Sublicensing) (a) pursuant to which GSK grants such Third Party the right to [**] the Licensed Compound or any Licensed Product [**], or Primary Know-How(b) [**], in each case ((a) or (b)), except for customary sublicenses and subcontracts granted in the ordinary course of business in such Major Market (e.g., sublicenses and subcontracts to CMOs, contract research organizations, distributors and other Third Parties performing services on behalf of GSK or any of its Affiliates), GSK shall promptly deliver notice to Mersana identifying such Third Party, together with a brief summary of the scope of such sublicense grant. GSK shall remain responsible for performance by its Sublicensees of all of its obligations to Xxxxxxx xxxxxxxxx to the same extent as if such activities were conducted by GSK.

Appears in 1 contract

Samples: Collaboration, Option and License Agreement (Mersana Therapeutics, Inc.)

Sublicensing. With respect to Partner may sublicense the rights granted in Sections 4.2(a) and 4.2(d), respectively, Legacy shall only have the right to sublicense such rights to the extent necessary to enable Legacy to grant the rights set forth in Section 5.1(a) and Section 5.1(b) of the Existing Ag Agreement, respectively (or, upon any termination of the Existing Ag Agreement not triggering termination of this Agreement under Section 12.4, any Downstream Agreement surviving such termination). Ag Partner and its Affiliates shall 2.1 to Third Parties provided that (i) use Commercially Reasonable Efforts Ironwood consents in writing to ensure that any Downstream Agreement satisfies the requirements set forth in Section 5.1(c) of the Existing Ag Agreement and proposed sublicense prior to execution, which consent Ironwood may not unreasonably withhold, (ii) ensure that any amendment Partner provides Ironwood a copy of such proposed sublicense prior to execution thereof, and (iii) the Existing Ag Agreement permitted by this Agreement ensures that the Existing Ag Agreement remains terms of such sublicense are consistent with the terms of this Agreement, contains terms reasonably sufficient to enable Legacy and its Affiliates to comply with the provisions of this Agreement and satisfy their obligations hereunder, and contains terms substantially as protective of Primary, its Affiliates, and any successor or assignee thereof, and the intellectual property rights owned, licensed, or controlled by . Notwithstanding the foregoing, as the terms contained in this Agreement are protective of Primary, its Affiliates, the Primary Patent Rights, and the Primary Know-How. For clarification, Legacy, its Affiliates, and Legacy Licensees have the right to subcontract the production of Partner will not under any circumstances grant a Legacy Royalty Product to a third party without approval of Primary, provided that any such subcontract shall contain confidentiality, intellectual property, and other provisions reasonably consistent with those of this Agreement and sufficient to ensure Legacy Licensees’ ability to fulfill their obligations under the Existing Ag Agreement (or any Downstream Agreement) and protect Legacy’s interests under the Existing Ag Agreement (or any Downstream Agreement), and Primary’s interests under this Agreement, in VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, and all Patent Rights and Know-How with respect to any sublicense of the foregoingrights granted under Section 2.1 in any Major Country, other than to contract sales organizations under agreements pursuant to which Partner records all sales of Product derived from the efforts of such contract sales organization(s). Legacy shall, to Partner will notify Ironwood of the extent available or known to Legacy or any Affiliate thereof, promptly execution of each sublicense hereunder and provide Primary a copy of any such executed sublicense to Ironwood promptly following execution thereof. In addition, each Party will require any licensee or Sublicensee, whether within or outside the Territory, of Technology with respect to the Licensed Compound or the Product, to cross-license or sublicense executed otherwise transfer or convey back to the granting Party all Technology which such licensee or Sublicensee may develop or acquire so that any of such Technology will be Controlled by Ag Partnerthe granting Party for purposes and to the extent of the licenses to the other Party provided by Sections 2.1, any Affiliate thereof2.2, and 2.3 above and to transfer ownership of all Regulatory Submissions and Regulatory Approvals pertaining to the Licensed Compound [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. or any other Legacy Licensee granting any Third Party any rights Product to any VDCs, CDCs, Viamet Derived Products, Ag Partner Collaboration Derived Products, Legacy Patents, Legacy Know-How, Primary Patents, or Primary Know-Howupon a termination of this Agreement to the extent necessary for Partner to assign to Ironwood such Regulatory Submissions and Regulatory Approvals under Section 8.2.3(c) hereof.

Appears in 1 contract

Samples: License Agreement (Ironwood Pharmaceuticals Inc)

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