Provision Language
Definitions
“Charitable Objectives” mean the charitable goals, principles and objectives of FNIH which are (i) to promptly and broadly disseminate new scientific information to the scientific community subject to prior protection of intellectual property and (ii) to ensure that innovations and related rights arising out of the Project are managed in a manner that furthers the objectives of enabling the subsequent accessibility of the developed products and health solutions (with respect to cost, quantity and applicability) by the people most in need within the Disease Endemic Countries as listed in Annex 4 of the world for the control of human diseases transmitted by insect vectors, including those spreading dengue and malaria.
4.Exclusivity; Further Rights to Bayer, SentiSearch and FNIH
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4.2 Collaboration Compounds for use in the Field of Use.
(a) Prior to offering any Third Party the opportunity to acquire a license to develop a Collaboration Compound upon which Bayer has decided not to enter into Phase 3 or to cease Development, Bayer shall provide SentiSearch with the opportunity in writing to consider whether SentiSearch wishes to acquire a license to further develop such Collaboration Compound for use in the Field of Use and to make, have made, import, sell and offer to sell products containing such Collaboration Compound for use in the Field of Use. SentiSearch shall have [***] days following its receipt of such writing in which to inform Bayer in writing that it is interested in acquiring such license. Thereafter, SentiSearch and Bayer shall have [***] days in which to negotiate and execute a license agreement. If no such license is executed, SentiSearch shall in any event receive a royalty equal to [***] of (i) any revenues derived from any Third Party license granted by Bayer relating to the Collaboration Compound for use in the Field of Use, less (ii) Bayer’s actual expenses in connection with the subject Collaboration Compound. This Section 4.2(a) shall expire five (5) years after the end of the Project Term.
(b) A license as set forth in Section 4.2(a) shall be royalty-bearing in relation to SentiSearch.
(c) A license as set forth in Section 4.2(a) shall be royalty-free in relation to FNIH for Charitable Objectives in Disease Endemic Countries as listed in Annex 4.
4.3 Collaboration Compounds for use outside the Field of Use
(a) Bayer hereby grants SentiSearch an exclusive option to negotiate and execute a license agreement enabling SentiSearch to further develop a Collaboration Compound for use outside the Field of Use and outside the field of agriculture, and to make, have made, import, sell and offer to sell products containing such Collaboration Compound for use outside the Field of Use and outside the field of agriculture. For the avoidance of doubt, the use of a Collaboration Compound as a repellent for protecting humans against attack of invertebrate animals is considered as a use outside the Field of Use and outside the field of agriculture. This Section4.3 shall expire five (5) years after the end of the Project Term. If no such license is executed, SentiSearch shall in any event receive a royalty equal to [***] of (i) any revenues derived from any Third Party license granted by Bayer relating to the Collaboration Compound for use outside the Field of Use, less (ii) Bayer’s actual expenses in connection with the subject CollaborationCompound. A license as set forth in this Section 4.3 shall be royalty-free in relation to FNIH for Charitable Objectives in Disease Endemic Countries as listed on Annex 4.
(b) Bayer grants FNIH a transferable, irrevocable, perpetual, non-exclusive, royalty free license with the right to sublicense, to use, manufacture, make, have made, produce, reproduce, copy, distribute, offer to sell, and sell the Collaboration Compounds outside the Field of Use, solely for Charitable Objectives in the Disease Endemic Countries. Exercise of the license shall be at FNIH’s sole discretion, upon FNIH’s reasonable determination that Bayer and SentiSearch have taken inadequate steps toward making the Collaboration Compounds available to the Disease Endemic Countries for use outside the Field of Use within a reasonable time at a reasonable cost, provided that prior to the exercise of the license, FNIH shall provide Bayer and SentiSearch with the reasonable opportunity to describe the steps that they are taking to make the Collaboration Compounds available to the Disease Endemic Countries for use outside the Field of Use consistent with the Charitable Objectives. Bayer and SentiSearch agree and acknowledge that FNIH is an intended third party beneficiary of this Agreement for the purposes of this Section 4.3 (b) and that FNIH is hereby granted certain rights and a license as set forth in this Section 4.3 (b) and has detrimentally relied on such fact.