“Background Intellectual Property” or “Background IP”, in respect of a Party, means any and all Intellectual Property used to perform the Project, and that is controlled by such Party on the Effective Date or during the term of the Project but created outside the scope of the Project. For the avoidance of doubt, Background IP does not include Project IP. The Background IP of each Party on the Effective Date is identified in Appendix C attached to and made a part of this Agreement. Notwithstanding the provisions of Section 23, each Party may amend the identification of its Background IP in Appendix C from time to time by providing notice to that effect to the other Parties.
“Project Intellectual Property” or “Project IP” means any Intellectual Property arising during activities carried out under the Research Plan. For clarity, Project IP shall include any Data and other Intellectual Property arising through activities carried out by one Party alone or with other Parties in the conduct of activities under the Research Plan.
8. Intellectual Property
8.2 Licenses and other rights
i) Limited license for the collaboration. Under this Agreement, each Party does hereby grant to the other Parties a non–exclusive, cost–free and limited license under Project IP and Background IP of the granting Party and the granting Party’s interest in any Joint Project IP (without any warranty) to the extent necessary for each other Party to carry out its obligations under the Research Plan, and solely for such purpose, except that no license under the Company technology shall be granted to or by a Party under this Agreement. Such license is not transferable or sub-licensable without prior written permission of the granting Party. Such permission will not be required for a Party to authorize those of its subcontractors or sub–grantees that have been identified in the Research Plan, where such authorization is to the extent necessary for the authorizing Party to carry out its obligations under the Research Plan, and solely for such purpose.
ii) Owners’ rights to exploit Joint Project IP. Subject to: (a) the licenses granted under Joint Project IP pursuant to Section 8.2(iii) for the research and pre–clinical development of Products and (b) any license granted under Joint Project IP pursuant to Section 8.4 for the clinical development and commercialization of Products; if a Party wishes to commercialize Joint Project IP for any other commercial purpose, then all co–owning Parties shall first attempt in good faith to mutually agree on a joint plan to commercialize such Joint Project IP including fair and reasonable consideration to each co–owning Party/Parties from net revenues derived from any joint licensing or other commercialization of the Joint Project IP. In the event such co–owning Parties are unable to agree on a joint commercialization plan for the Joint Project IP, each co–owning Party shall have the right to independently practice, license and otherwise exploit its share of such Joint Project IP without any obligation to account to the other co–owning Party/Parties, and each co–owning Party will grant the other co– owning Party/Parties a non–exclusive, non–transferable, cost–free, perpetual, irrevocable and worldwide license (with the right to sublicense such license through multiple tiers) to its share in Joint Project IP. In that case, a co–owning Party is permitted to assign its share in Joint Project IP without the prior written approval of other co–owning Parties of such Joint Project IP, provided that the assignment agreement makes the assigned share of such Joint Project IP subject to the terms of this Agreement.
iii) Licenses to develop Products. For the avoidance of doubt, it is acknowledged and agreed by the Parties that notwithstanding any other provision of this Agreement no Party or Parties shall have the right to conduct clinical development or commercial exploitation of a Product under any Project IP of another Party without the license agreement with the respective Party in writing pursuant to Section 8.4. Each Party does hereby grant the Parties referred to in numbered paragraphs 1–3 below a non–exclusive, cost–free, irrevocable (subject to the condition in sub–Section 5, below, and Section 8.4(ii)) and worldwide license to the granting Party’s Project IP (including such Party’s share in Joint Project IP) to the extent necessary and useful for each such Party to conduct research or pre–clinical development of the respective Product of such other Party (but not any other product) in the Field. Each Party shall be entitled to sublicense the foregoing license to any third party contract research organization (“CRO”) used by the Party solely to conduct limited aspects of the research or pre–clinical development of the respective Product of such Party in the Field on such Party’s behalf without prior permission of the owner of the relevant Project IP. Any other sublicense to a third party requires the permission of the owner of the relevant Project IP, which permission shall not be unreasonably refused. The scope of the licenses shall be on the following:
- each Institute and each of Com2 and A grants a non–exclusive license to Com1 for research and pre– clinical development (but not clinical development or commercial exploitation), in the Field, of RNA Vaccine Product only, and not for any pre–clinical or clinical development or commercial exploitation by Com1 in respect of any Protein Vaccine Product or Antibody Product;
- each Institute and Com1 grants a non–exclusive license to Com2 and A for research and pre–clinical development (but not clinical development or commercial exploitation), in the Field, of Antibody Product only, and not for any pre–clinical or clinical development or exploitation by Com2 or A in respect of any …… Vaccine Product or …. Vaccine Product; and
- each of Com1, Com2 and A, and the Institutes grants a non–exclusive license to each Institute for research and pre–clinical development (but not clinical development or commercial exploitation), in the Field, of ….. Vaccine Product only, and not for any pre–clinical or clinical development or exploitation by any Institute in respect of any ….. Vaccine Product or …. Product.
- Each of the licenses under sub–Sections 1–3 shall remain subject to the right of each granting Party to conduct Internal Research Activities under the licensed Project IP.
- Each of the non–exclusive licensees under the sub–Sections 1–3 above shall use commercially reasonable efforts to pursue the research and pre–clinical development of the Products that are the subjects of the licenses granted.