Master Alliance Provisions Guide (MAPGuide)

MSD – MPP, Molnupiravir License Agreement

  • Intellectual Property | Ownership of results

MSD-MPP Agreement

4. MPP Obligations

4.2 Improvements.

(a) MPP shall require Sublicensees to disclose promptly to MSD in English, without charge, any Improvements. As to any such Improvements (including any patents or patent applications that may be filed by Sublicensee relating to such Improvements), MPP shall require that Sublicensees grant to MSD, its Affiliates, and MPP a world-wide, royalty-free, non-exclusive, sublicensable license to any Improvements (“Improvement License”) for any and all purposes in the Field, including the rights to make, have made, use, and/or sell the Substance and/or the Product or any other pharmaceutical product using the Substance. For the avoidance of doubt, the Improvement License shall not affect the Sublicensee’s ownership of any Improvements. MPP shall not sublicense the Improvement License to any Third Party or to another Sublicensee without the consent of the Sublicensee.

(b) Further to Section 4.2 (a), MSD or its Affiliates shall have the right to sublicense the Improvement License to a Third Party (“Third-Party Sublicense”) as follows and shall negotiate and agree with Sublicensee in good faith a royalty and development fee to be paid to the Sublicensee for such Third-Party Sublicense:

(i) contract manufacturers for use in connection with the commercialization of MSD products; or

(ii) a Third Party in compliance with any contractual obligations that MSD or its Affiliates has with such Third Party.

(c) MPP shall further require that Sublicensees grant to MSD and its Affiliates an option and right of first refusal to obtain a sole, sublicensable, world-wide, royalty-bearing license to the Improvements in the Field, for any use outside the Field (“Out-of-Field License”) including the rights to make, have made, use, and/or sell the Substance and/or the Product or any other pharmaceutical product using the Substance outside the Field. MSD shall negotiate and agree with Sublicensee in good faith a royalty and development fee to be paid to the Sublicensee for the Out-of-Field License. For the avoidance of doubt, the Out-of-Field License shall not affect the Sublicensee’s ownership of any Improvements to the Products.

Form of Sublicense Agreement

5. Intellectual Property

5.1 Licensee shall disclose, promptly and in English, to MPP and MSD, without charge, any Improvements. As to any such Improvements (including any patents or patent applications that may be filed by Licensee relating to such Improvements), Licensee shall grant to MSD, its Affiliates, and MPP a world-wide, royalty-free, non-exclusive, sublicensable license to any Improvements (“Improvement License”) for any and all purposes in the Field, including the rights to make, have made, use, and/or sell the Substance and/or the Product or any other pharmaceutical product using the Substance.

For the avoidance of doubt, the Improvement License shall not affect the Licensee’s ownership of any Improvements. MPP shall not sublicense the Improvement License to any Third Party or to another MPP Licensee without the consent of the Licensee.

5.2 Further to Section 5.1, Licensee shall grant to MSD and/or its Affiliates the right to sublicense the Improvement License to a Third Party (“Third-Party Sublicense”) as follows, and Licensee shall negotiate and agree with MSD and/or its Affiliates in good faith a royalty and development fee to be paid to the Licensee for such Third-Party Sublicense:

(iii) contract manufacturers for use in connection with the commercialization of MSD products; or

(iv) a Third Party in compliance with any contractual obligations that MSD or its Affiliates has with such Third Party.

5.3 Licensee shall grant to MSD and its Affiliates an option and right of first refusal to obtain a sole, sublicensable, world-wide, royalty-bearing license to the Improvements in the Field, for any use outside the Field (“Out-of-Field License”) including the rights to make, have made, use, and/or sell the Substance and/or the Product or any other pharmaceutical product using the Substance outside the Field. MSD shall negotiate and agree with Licensee in good faith a royalty and development fee to be paid to the Licensee for the Out-of-Field License. For the avoidance of doubt, the Out-of-Field License shall not affect the Licensee’s ownership of any Improvements to the Products.