Provision Language
Definitions
“Program Inventions” – Inventions conceived or first reduced to practice by either Party or jointly by the parties during and in the performance of the Scope of Work
9. Materials
(a) The Parties anticipate that under this Agreement it may be necessary for either Party to transfer to the other material(s) of a proprietary nature, including but not limited to cell lines, vectors, nucleic acid sequences, sera, processes, samples and reagents (Program Materials). Program Materials provided by IAVI on a non-exclusive basis to Theraclone, whether owned by IAVI or by other third parties shall be, for purposes of this Agreement, owned by IAVI and controlled by the licenses granted by this Agreement (IAVI Materials). IAVI Materials are human biospecimens of freshly cryopreserved lymphocytes from HIV-infected volunteers, and include any cellular progeny, compositions and formulations of such materials, and any mixtures or combinations of such materials. Program Materials provided by Theraclone to IAVI, IAVI’s collaborators, or IAVI’s contractors shall be owned by Theraclone and controlled by the licenses granted by this Agreement (Theraclone Materials). Theraclone Materials include B-cell supernatants, any replicates, progeny, compositions, formulations, and derivatives therefrom (including, without limitation, antibodies derived from any of the foregoing), and any mixtures or combinations of such materials. The Parties agree that other Party’s Program Materials may not be distributed to any other Party for any purpose except those covered by the licenses granted by this Agreement.
11.Licenses
(a) Under this Agreement the definition of licensed fields shall be defined as: (i) “IAVI Licensed Fields” means use of any anti-HIV antibody or derivatives thereof derived from Program Materials andProgram Inventions (A) as a tool to design HIV vaccines, (B) as part of any HIV vaccine (1) that is for prophylactic use, and (2) that is co-formulated with an immunogenic, bona fide HIV vaccine antigen or part of a vector expressing a protein, or (C) as part of any HIV diagnostic products; and (ii) “Theraclone Licensed Fields” means use of an antibody or derivatives thereof derived from Program Materials and Program Inventions used (A) to treat (excluding vaccines) HIV, or (B) for an assay to pre-screen HIV- positive human patients to determine eligibility for a therapeutic treatment that incorporates an antibody proprietary to Theraclone, or for an assay to monitor HIV-positive human patients receiving such therapeutic treatment either during clinical development or following commercialization thereof.
(b) All licenses granted by this Agreement shall be for a “Territory” and Territory means the entire world.
(c) Licenses:
(i) IAVI hereby grants to Theraclone, under all of IAVI’s intellectual property and proprietary rights in, to, and under the IAVIMaterials and the Program Inventions, an irrevocable, perpetual, exclusive, sublicensable (through multiple tiers of sublicenses), fully paid-up, royalty-free right and license in the Territory to make, have made, use, have used, sell, have sold, offer for sale, have offered for sale, or import any and all antibodies related to or from the IAVI Materials and Program Inventions in the Theraclone Licensed Fields, with the understanding that Theraclone shall ensure that any commercial program for HIV treatment products will incorporate the principles of prompt dissemination of data and licensed access to products or enabling reagents at affordable prices in reasonable quantities for Developing Countries. As used herein the term “Developing Countries” shall mean all countries in the Territory except for the USA, Canada, the countries of the European Union (Austria, Belgium, Bulgaria, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia,Slovenia, Spain, Sweden, and the United Kingdom), Switzerland, Iceland, Japan, Australia, and New Zealand. Not withstanding the foregoing, any license with respect to Section 1(a)(ii)(B) shall be non-exclusive.
(ii) Theraclone hereby grants to IAVI, under all of Theraclone’s intellectual property and proprietary rights in, to and under Theraclone Materials and the Program Inventions, an irrevocable, perpetual, exclusive, sublicensable (through multiple tiers of sublicenses), fully paid-up, royalty-free right and license in the Territory to make, have made, use, have used, sell, have sold, offer for sale, have offered for sale, or import any and all antibodies related to or from the Theraclone Materials and Program Inventions in the IAVI Licensed Fields with the understanding that IAVI shall ensure that any commercial program will incorporate the principles of prompt dissemination of data and access to products at affordable prices in Developing Countries.
(d) Each Party hereby reserves all rights in and to all its respective materials and inventions not expressly granted in this Agreement and there are no implied rights or licenses under this Agreement.