Provision Language
Definitions
“Licensed Product” means any product, good or service covered by an Outstanding Claim of the UBC Controlled IP.
“UBC Collaboration IP” means the collective reference to UBC Program Developments and UBC’s interest in Joint Program Developments.
“UBC Controlled IP” means the collective reference to UBC Program Developments, UBC’s interest in Joint Program Developments, and the AlCana Collaboration IP assigned to UBC in accordance with Section 8.1.
3. Research Program. Joint Steering Committee
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3.3 Responsibility for the Research Program. The Workplan shall allocate responsibility for the conduct of the Research Program among the Parties, and shall include deliverables, timelines and the Budget. Alnylam, UBC and AlCana will each use diligent efforts in conducting the Research Program.
6.Background Materials and Background Technology
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6.2 Grant of Rights by Alnylam. During the Research Term, Alnylam grants to UBC and AlCana a non–exclusive, non–transferable (except as set forth in Section 13.3), paid–up right and license, without the right to grant sublicenses, to use Alnylam Materials and Alnylam Technology solely for the conduct of the Research Program.
6.3 Grant of Rights by AlCana. During the Research Term, AlCana grants to UBC and Alnylam a non–exclusive, non–transferable (except as set forth in Section 13.3), paid–up right and license, without the right to grant sublicenses, to use AlCana Materials and AlCana Technology solely for the conduct of the Research Program.
6.4 Grant of Rights by UBC. During the Research Term, UBC grants to Alnylam and AlCana a non–exclusive, non–transferable (except as set forth in Section 13.3), paid–up right and license, without the right to grant sublicenses, to use UBC Materials and UBC Technology solely for the conduct of the Research Program.
8. Collaboration IP
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8.2 UBC Controlled IP
8.2.1 Licenses. The Parties hereby acknowledge that (a) the portion of the UBC Controlled IP defined as Schedule A IP in the Supplemental Agreement is (i) exclusively licensed to Tekmira under the UBC–Tekmira License Agreement and (ii) exclusively sublicensed to Alnylam under the UBC Sublicense Agreement in the Field of Use; and (b) the portion of UBC Controlled IP defined as Schedule 1 IP in the Supplemental Agreement is (a) exclusively licensed by UBC to Tekmira in the Field of Use (the “Tekmira License”), (b) exclusively sublicensed by Tekmira to Alnylam in the Field of Use (such sublicense, together with the sublicense described in Section 8.2.1(a) above, the “Alnylam Sublicense”), and (c) together with the Consultant IP, further sub–sublicensed by Alnylam to Tekmira (the “Tekmira Sublicense”) and to Protiva (the “Protiva Sublicense”), in each case on the terms and conditions set forth in the Supplemental Agreement. For clarity, the Parties acknowledge that the terms “Tekmira License,” “Alnylam Sublicense,” “Tekmira Sublicense” and “Protiva Sublicense,” as used in this Agreement, refer only to the license or sublicense specifically of the applicable UBC Controlled IP and Consultant IP, as the case may be, and that such term is not applicable to any other aspect of, or to any other Intellectual Property or intellectual property licensed or sublicensed under, existing or future license agreements between UBC and Tekmira or any sublicenses thereunder, even though the UBC Controlled IP and Consultant IP is licensed and sublicensed under certain existing license agreements between UBC and Tekmira and sublicenses thereunder, as described in the Supplemental Agreement. No termination or conversion to nonexclusive of any right under any of the Licenses will be applicable to those aspects of such existing or future license agreements between UBC and Tekmira or any sublicenses thereunder that are applicable to Intellectual Property or intellectual properties other than the UBC Controlled IP and Consultant IP.
8.2.2 Sublicenses. The Alnylam Sublicense includes the right to grant sublicenses subject to the terms of this Section 8.2.2. All sublicense agreements entered into by Alnylam or its Affiliates after the Effective Date pursuant to this Section 8.2.2 shall be consistent and not conflict with the relevant terms of this Agreement and the Supplemental Agreement, Sublicensees shall agree to abide by all of the terms of such agreements as a condition of the sublicense, and Alnylam will remain responsible for the compliance of all its Affiliates and Sublicensees (other than Tekmira and Protiva and their Related Parties) with the relevant terms of such agreements as if such performance were carried out by Alnylam itself. Without limiting the generality of the forgoing, each such sublicense agreement will contain provisions that will: (a) permit UBC and all other non–profit academic research institutions to use the UBC Controlled IP for further academic and scholarly research and to freely publish the results of that research; and (b) impose reasonable obligations on the Sublicensee to diligently develop and commercialize the UBC Controlled IP and Licensed Products and to periodically report all Net Sales of Licensed Products and achievement of milestone events, which, in each case, are not less favourable to UBC and AlCana than the relevant terms of this Agreement and the Supplemental Agreement.
8.2.3 Notice of Sublicenses. Alnylam will notify UBC and AlCana promptly after it enters into each sublicensing agreement. Alnylam will provide to UBC and AlCana a copy of such sublicense agreement. Any such copy may contain reasonable redactions as Alnylam may make; provided, that such redactions do not include provisions necessary to demonstrate compliance with the requirements of thisAgreement.
8.2.4 Alnylam Responsibility for Affiliates and Sublicensees. Alnylam shall be jointly and severally responsible to UBC and AlCana with its Affiliates and Third Party Sublicensees for failure by its Affiliates and Third Party Sublicensees to comply with, and Alnylam guarantees the compliance by each of its Affiliates and Third Party Sublicensees with, the terms and conditions of this Agreement and the Supplemental Agreement applicable to the Alnylam Sublicense; provided, however, that Alnylam shall not be responsible for or guarantee the compliance of Tekmira or Protiva with respect to the Tekmira License, the Tekmira Sublicenseor the Protiva Sublicense.
8.2.5 Retained Right of UBC. Notwithstanding anything to the contrary in Section 8.1, this Section 8.2 or the Supplemental Agreement, the Parties acknowledge and agree that UBC and any UBC employees who are named inventors on Patent Rights covering UBC Controlled IP (whether or not such inventors remain employees of UBC) hereby retain the use of such UBC Collaboration IP in the Field of Use without charge in any manner whatsoever for non–commercial research, scholarly publication, educational or other non–commercial use.
8.2.6 No Implied Licenses. Except as expressly set forth in this Agreement or the Supplemental Agreement, no Party grants any licenses under its intellectual property rights to any other Party.
8.3 Diligence. Alnylam shall use Commercially Reasonable Efforts to research, develop and commercialize a Licensed Product in the Field of Use. For purposes of this Section 8.3, the efforts of Alnylam’s Related Parties shall also be considered the efforts of Alnylam.
Alnylam will be considered to have failed to meet its obligations to use Commercially Reasonable Efforts in the event that any of the following occur:
(a) [**] formulation within [**] years after [**]; or
(b) [**] within [**] years after [**] covering at least [**].
In the event of a failure by Alnylam to meet its obligations under subsections (a) or (b) above, the Parties will discuss Alnylam’s failure. If the reason for failure was the result of some factor outside Alnylam’s reasonable control and that such failure did not result from a lack of due diligence on Alnylam’s part, then the Parties will discuss a reasonable extension to the timelines set forth in (a) and/or (b) above. If Alnylam is unable to convince both AlCana and UBC that the reason for failure was the result of some factor outside Alnylam’s reasonable control and that such failure did not result from a lack of due diligence on Alnylam’s part, then UBC shall have the right to convert the Tekmira License to a non–exclusive license in accordance with the procedures set forth in Section 10.2.2, and AlCana shall have, without further act by UBC, an irrevocable, perpetual, royalty–free, worldwide, non–exclusive license under the AlCana Collaboration IP. All other terms and conditions of this Agreement and the Supplemental Agreement shall remain in full force and effect.