Master Alliance Provisions Guide (MAPGuide)

DNDi Template Research Collaboration and License Agreement

  • Intellectual Property | License Grants

Definitions

Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice by one or both Parties (or on their behalf) during the performance of the Research Program. Collaboration Technology includes Partner Collaboration Technology, DNDi Collaboration Technology and Joint Collaboration Technology.

DNDi Background Technology” shall mean any Technology that: a) is owned by or licensed to DNDi or its Affiliates by any Third Party with a right to sublicense; b) exists as of the Effective Date or is made, developed, conceived and reduced to practice, thereafter by DNDi (or on its behalf) or its licensor outside the scope of this Agreement; and c) is necessary or useful for the Partner to perform the activities under the Research Program and to exercise the licenses granted hereunder.

DNDi Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice solely by DNDi (or on its behalf) during the performance of the Research Program.

Joint Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice jointly by the Parties (or on their behalf) during the performance of the Research Program.

Partner Background Technology” shall mean any Technology that: a) is owned by or licensed to Partner or its Affiliates by any Third Party with a right to sublicense; b) exists as of the Effective Date or is made, developed, conceived and reduced to practice, thereafter by Partner (or on its behalf) or its licensor outside the scope of this Agreement; and c) is necessary or useful for DNDi to perform the activities under the Research Program and to exercise the licenses granted hereunder.

Partner Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice solely by Partner (or on its behalf) during the performance of the Research Program.

14. GRANT OF LICENSE RIGHTS

14.1 Partner hereby grants to DNDi a non–exclusive, worldwide, perpetual, irrevocable, fully paid, royalty–free license, with the right to sublicense to Third Parties under Partner’s rights to and interests in Partner Background Technology and Partner Collaboration Technology:

a) to the extent necessary or useful to perform the Research Program and the Development Program; and

b) for non–commercial research purposes.

14.2 DNDi hereby grants to Partner a non–exclusive, worldwide, perpetual, irrevocable and, fully paid, royalty–free license, with the right to sublicense to Third Parties under DNDi’s rights to and interests in DNDi Background Technology and DNDi Collaboration Technology:

a) to the extent necessary or useful to perform the Research Program and the Development Program; and

b) for non–commercial research purposes.

14.3 Each Party hereby grants to the other Party a non–exclusive, worldwide, perpetual, irrevocable, fully paid, royalty–free license, with the right to sublicense to Third Parties under such Party’s rights to and interests in the Joint Collaboration Technology for any purpose.

14.4 Effective at such time as Partner elects to become the Development Partner and a Development Agreement is executed between the Parties, DNDi hereby grants to Partner, to the extent that it is able, in addition to the licenses granted under Section 14.2, a non exclusive, worldwide, perpetual, irrevocable license, with the right to sublicense under DNDi’s rights to and interests in DNDi Background Technology and DNDi Collaboration Technology to commercialize the Product in the Field outside of the Territory at a price to be determined by Partner that allows a purchaser in a particular sector to buy such Product in sufficient quantities to meet its public health or individual needs. In consideration of the license grants outside the Territory, Partner shall compensate DNDi, such amount of compensation to be mutually agreed upon by the Parties based on good faith negotiations. It is DNDi’s intent to invest any such compensation in access to medicines programs.

14.5 Effective at such time as Partner elects not to become the Development Partner or the Parties do not execute a Development Agreement within the Negotiation Period, Partner hereby grants to DNDi, in addition to the license under Section 14.1, a non–exclusive, worldwide, perpetual, irrevocable, fully paid, royalty–free license, with the right to sublicense to Third Parties under Partner’s rights to and interests in Partner Background Technology and Partner Collaboration Technology, to the extent necessary or useful to commercialize the Product at a price to be determined by DNDi and/or the Development Partner in the Field outside the Territory.

14.6 In order to avoid duplication of efforts, in the event that either Party performs, alone or in collaboration with a third party, any research and development activities in the Field on any Molecule, that Party shall provide the other Party, on a confidential basis, with any information arising from such research and development activities that is relevant to the Research Program or Development Program.

14.7 In the event that neither Party wishes to or is able to pursue the development of a Clinical Candidate, the Parties shall consider requests by Third Party(ies) pursuing similar objectives to DNDi for grant, which shall not be unreasonably withheld, to such Third Party(ies) licences under rights to and interests in their respective Technology, on substantially the same terms of this Agreement.

14.8 Notwithstanding any other provision of this Agreement, all licenses granted under Sections 14.1 to 14.5 are subject to Section 14.9 and Article 21.

14.9 In the event that Partner Background Technology or DNDi Background Technology includes Technology in‐licensed from a Third Party by Partner or DNDi, as the case may be, the Party granting a license under Sections 14.1 to 14.5 above shall include in such license the grant of a sublicense of such Third Party rights:

a) to the extent permitted under the agreement between such Party and such Third Party; and

b) on the same terms and conditions licensed to such Party by such Third Party.

In the event that the sublicense is more limitative than the terms of licenses under Sections 14.1 to 14.5 then the Party granting a license under Sections 14.1 to 14.5 above shall use Reasonable Efforts, at the other Party’s written request, to procure that such Third Party grants to such other Party a non‐exclusive license under such Third Party’s relevant Technology for the purposes described in Sections 14.1 to 14.5. 14.10 Except as explicitly set forth in this Agreement, neither Party shall acquire any license or other interest, by implication or otherwise, in any Technology, including the Molecule(s), of the other Party disclosed to it under this Agreement.