Common use of Third Party Technologies Clause in Contracts

Third Party Technologies. 9.5.1 If after the Effective Date, NovaCal acquires or licenses from a Third Party subject matter within the NovaCal Technology (“Third Party Technology”) that is subject to payment obligations to the Third Party, then NovaCal shall so notify Alcon and the following shall apply, provided that the Third Party Technology represents additional technology that supplements the NovaCal Technology and is not intended primarily as a freedom-to-operate license or acquisition with respect to Commercialization of Licensed Compounds in the Field: the rights granted to Alcon hereunder with respect to such Third Party Technology shall be subject to Alcon promptly reimbursing NovaCal for the amounts that become owing to such Third Party by reason of the grant to or exercise by or under authority of Alcon of such rights to such Third Party Technology and Alcon shall reimburse NovaCal for a reasonable portion of any upfront fee or other similar amounts paid to acquire such Third Party Technology that is allocable to the rights granted to Alcon to such Third Party Technology hereunder. Upon request by Alcon, NovaCal shall disclose to Alcon a written description of such payment obligations. Alcon may exclude Third Party Technology from the rights granted to it hereunder by providing notice to NovaCal thereof, provided that such notice is provided prior to the exercise of any rights to such Third Party Technology by or under authority of Alcon; in such event, such Third Party Technology shall be deemed excluded from the NovaCal Patents, NovaCal Know-How and NovaCal Technology. 9.5.2 If after the Effective Date, Alcon or its Affiliates acquires or licenses from a Third Party any Know-How or Patents, required (i.e., for which there is no commercially practicable alternative) for the Development, Manufacture or Commercialization of Licensed Products (“Alcon Technology”), then Alcon shall use reasonable efforts to notify NovaCal thereof from time to time. If requested by NovaCal (whether as a result of such notice or otherwise), Alcon agrees, to the extent Alcon Controls rights outside the Field to such Alcon Technology to grant NovaCal a non-exclusive license, with the right to sublicense NovaCal’s Marketing Partners, to make, have made, use, sell, offer for sale and otherwise exploit such Alcon Technology in connection with activities with Licensed Compounds outside the Field, and the following shall apply: the rights granted to NovaCal hereunder with respect to such Alcon Technology shall be subject to NovaCal promptly reimbursing Alcon for the amounts that become owing to such Third Party by reason of the grant to or exercise by or under authority of NovaCal of such rights to such Alcon Technology and NovaCal shall reimburse Alcon for a reasonable portion of any upfront fee or other similar amounts paid to acquire such Third Party Technology that is allocable to the rights granted to NovaCal to such Alcon Technology hereunder, and all other terms under which Alcon acquired or licensed such Alcon Technology from such Third Party shall be passed through to NovaCal. Upon request by NovaCal, Alcon shall disclose to NovaCal a written description of such payment obligations. The Parties shall enter into a separate license agreement documenting such license grant and the associated terms and conditions; provided that NovaCal shall not have the right to exercise the licenses granted pursuant to this Section 9.5.2 with respect to Know-How or Patents in a manner that can reasonably be expected to (i) create a risk of substitutability of the type contemplated in Section 2.6.3 hereof, or (ii) otherwise compete with Alcon products in the ophthalmic, otic and nasal fields. 9.5.3 The obligations of NovaCal and the rights of Alcon under this Agreement shall be subject to, and limited by, any agreements pursuant to which NovaCal acquired or licensed any NovaCal Technology and if any such agreement requires that a particular provision be incorporated in a sublicense granted thereunder, such provision shall be deemed incorporated by reference herein only the extent so required and with respect to the subject matter of such agreement. Notwithstanding anything herein to the contrary, with respect to the Prosecution and Maintenance, and enforcement, of NovaCal Patents licensed by NovaCal from a Third Party, to the extent NovaCal has the right to do so, NovaCal shall cooperate with Alcon to Prosecute and Maintain and enforce such NovaCal Patents in the same manner as set forth in Sections 9.2 and 9.4 above. As between NovaCal and Alcon, any recoveries from enforcement of such NovaCal Patents licensed from a Third Party (including any amounts that NovaCal receives from the Third Party licensor as a result of such enforcement) shall be shared in accordance with Section 9.4.2, after deducting from such recoveries any amounts owed to the Third Party licensor for such enforcement; provided that any Enforcement Actions initiated by the Third Party licensor shall be deemed initiated by NovaCal for purposes of Section 9.4.2 above, and the costs and expenses incurred by NovaCal in such Enforcement Action shall include the costs and expenses reimbursed or required to be reimbursed by NovaCal to the Third Party licensor in such Enforcement Action.

Third Party Technologies. 9.5.1 If (a) Subject to Sections 1.21 and 11.3(c), if, after the Effective Date, NovaCal VectivBio acquires or licenses from a Third Party subject matter rights in intellectual property within the NovaCal Technology VectivBio Patent or VectivBio Know-How and Materials (“Third Party New Technology”) that is subject to royalty, milestone or other payment obligations to the such Third Party, then NovaCal shall so notify Alcon and the following shall apply, provided that the Third Party Technology represents additional technology that supplements the NovaCal Technology and is not intended primarily as a freedom-to-operate license or acquisition with respect to Commercialization of Licensed Compounds in the Field: the rights and license granted to Alcon hereunder AKP under this Agreement with respect to such Third Party New Technology shall be subject to Alcon AKP promptly reimbursing NovaCal VectivBio for the any milestones, royalties or other amounts that become owing to such Third Party by reason of the grant to to, or exercise by or under the authority of Alcon of, AKP of such rights with respect to such Third Party New Technology and Alcon AKP shall reimburse NovaCal VectivBio for a reasonable portion of any upfront fee fee, milestone payments or other similar amounts paid or owing to acquire such Third Party New Technology that is allocable to the rights granted to Alcon AKP to such Third Party New Technology hereunder. Upon request by AlconIn the event AKP does not promptly agree in writing to reimburse VectivBio for such amounts upon request, NovaCal shall disclose to Alcon a written description of then such payment obligations. Alcon may exclude Third Party Technology from the rights granted to it hereunder by providing notice to NovaCal thereof, provided that such notice is provided prior to the exercise of any rights to such Third Party Technology by or under authority of Alcon; in such event, such Third Party New Technology shall thereafter be deemed excluded from the NovaCal Patents, NovaCal VectivBio Patent or VectivBio Know-How and NovaCal TechnologyMaterials, as applicable, hereunder. The reimbursement made by AKP to VectivBio under this Section 10.4.3(a) shall be treated as Third Party Royalties pursuant to Section 9.3.2(b), and the Running Royalty Payments under Section 9.3.1 shall be reduced pursuant to Section 9.3.2(b). 9.5.2 If (b) If, after the Effective Date, Alcon or its Affiliates AKP acquires or licenses from a Third Party any subject matter within the AKP Patent or AKP Know-How or Patents, required (i.e., for which there is no commercially practicable alternative) for the Development, Manufacture or Commercialization of Licensed Products and Materials (“Alcon AKP New Technology”)) that is subject to royalty, then Alcon shall use reasonable efforts to notify NovaCal thereof from time to time. If requested by NovaCal (whether as a result of such notice milestone or otherwise), Alcon agrees, to the extent Alcon Controls rights outside the Field other payment obligations to such Alcon Technology to grant NovaCal a non-exclusive licenseThird Party, with the right to sublicense NovaCal’s Marketing Partners, to make, have made, use, sell, offer for sale and otherwise exploit such Alcon Technology in connection with activities with Licensed Compounds outside the Field, and the following shall apply: the rights and license granted to NovaCal hereunder VectivBio under this Agreement with respect to such Alcon AKP New Technology shall be subject to NovaCal VectivBio promptly reimbursing Alcon AKP for the any milestones, royalties or other amounts that become owing to such Third Party by reason of the grant to to, or exercise by or under the authority of NovaCal of, VectivBio of such rights with respect to such Alcon AKP New Technology and NovaCal VectivBio shall reimburse Alcon AKP for a reasonable portion of any upfront fee fee, milestone payments or other similar amounts paid or owing to acquire such Third Party AKP New Technology that is allocable to the rights granted to NovaCal VectivBio to such Alcon AKP New Technology hereunder. In the event VectivBio does not promptly agree in writing to reimburse AKP for such amounts upon request, and all other terms under which Alcon acquired then such AKP New Technology shall thereafter be deemed excluded from the AKP Patent or licensed such Alcon Technology from such Third Party shall be passed through to NovaCal. Upon request by NovaCal, Alcon shall disclose to NovaCal a written description of such payment obligations. The Parties shall enter into a separate license agreement documenting such license grant and the associated terms and conditions; provided that NovaCal shall not have the right to exercise the licenses granted pursuant to this Section 9.5.2 with respect to AKP Know-How or Patents in a manner that can reasonably be expected to (i) create a risk of substitutability of the type contemplated in Section 2.6.3 hereofand Materials, or (ii) otherwise compete with Alcon products in the ophthalmicas applicable, otic and nasal fieldshereunder. 9.5.3 The obligations of NovaCal and the rights of Alcon under this Agreement shall be subject to, and limited by, any agreements pursuant to which NovaCal acquired or licensed any NovaCal Technology and if any such agreement requires that a particular provision be incorporated in a sublicense granted thereunder, such provision shall be deemed incorporated by reference herein only the extent so required and with respect to the subject matter of such agreement. Notwithstanding anything herein to the contrary, with respect to the Prosecution and Maintenance, and enforcement, of NovaCal Patents licensed by NovaCal from a Third Party, to the extent NovaCal has the right to do so, NovaCal shall cooperate with Alcon to Prosecute and Maintain and enforce such NovaCal Patents in the same manner as set forth in Sections 9.2 and 9.4 above. As between NovaCal and Alcon, any recoveries from enforcement of such NovaCal Patents licensed from a Third Party (including any amounts that NovaCal receives from the Third Party licensor as a result of such enforcement) shall be shared in accordance with Section 9.4.2, after deducting from such recoveries any amounts owed to the Third Party licensor for such enforcement; provided that any Enforcement Actions initiated by the Third Party licensor shall be deemed initiated by NovaCal for purposes of Section 9.4.2 above, and the costs and expenses incurred by NovaCal in such Enforcement Action shall include the costs and expenses reimbursed or required to be reimbursed by NovaCal to the Third Party licensor in such Enforcement Action.