Provision Language
Definitions
“Licensed Processes” means processes, which in the course of being practiced, would be within the scope of one or more claims of the Licensed Patent Rights that have not been held unpatentable, invalid or unenforceable by an unappealed or unappealable judgment of a court of competent jurisdiction.
“Licensed Products” means tangible materials, which in the course of manufacture, use, sale, or importation, would be within the scope of one or more claims of the Licensed Patent Rights that have not been held unpatentable, invalid or unenforceable by an unappealed or unappealable judgment of a court of competent jurisdiction. For the sake of clarity, vaccine primes and/or boosters incorporating Materials (or functional components of such) described in Appendix B are considered Licensed Products.
“Licensed Fields of Use” means development and use of Licensed Patent Rights and Materials in combination with Licensee’s proprietary technology for the creation of a preventive Modified Vaccinia Ankara Virus–Virus Like Particle (MVA–VLP) vaccine primes and/or boosters against -“SARS–CoV–2.”
“Licensed Patent Rights” shall mean:
(a) Patent applications (including provisional patent applications and PCT patent applications) or patents listed in Appendix A, all divisions and continuations of these applications, all patents issuing from these applications, divisions, and continuations, and any reissues, reexaminations, and extensions of all these patents;
(b) to the extent that the following contain one or more claims directed to the invention or inventions disclosed in 2.7(a):
(i) continuations–in–part of 2.7(a);
(ii) all divisions and continuations of these continuations–in–part;
(iii) all patents issuing from these continuations–in–part, divisions, and continuations;
(iv) priority patent application(s) of 2.7(a); and
(v) any reissues, reexaminations, and extensions of all these patents;
(c) to the extent that the following contain one or more claims directed to the invention or inventions disclosed in 2.7(a): all counterpart foreign and U.S. patent applications and patents to 2.7(a) and 2.7(b), including those listed in Appendix A; and
(d) Licensed Patent Rights shall not include 2.7(b) or 2.7(c) to the extent that they contain one or more claims directed to new matter which is not the subject matter disclosed in 2.7(a).
“Materials” means
(a) tangible materials, identified in Appendix B, including progeny, subclones, unmodified derivatives,fractions, or components isolated therefrom, whether or not within the scope of the claims of the Licensed Patent Rights;
(b) other tangible materials which, in the course of manufacture, use, sale, or importation would be within the scope of one or more claims of the Licensed Patent Rights that have not been held unpatentable, invalid or unenforceable by an unappealed or unappealable judgment of a court of competent jurisdiction;
(c) modifications created by Licensee that contain or incorporate any of the tangible materials identified in Paragraph 2.11(a) and 2.11(b) above.
3. Grant Of Rights
3.1 The IC hereby grants and the Licensee accepts, subject to the terms and conditions of this Agreement, a nonexclusive license under the Licensed Patent Rights in the Licensed Territory to make and have made, to use and have used, to sell and have sold, to offer to sell, and to import any Licensed Products in the Licensed Fields of Use and to practice and have practiced any Licensed Processes in the Licensed Fields of Use. For the sake of clarity, the Licensee has no right to sell, transfer or otherwise distribute Materials that are not incorporated as a component of a vaccine prime and/or booster Licensed Product in combination with Licensee’s proprietary technology.
3.2 This Agreement confers no license or rights by implication, estoppel, or otherwise under any patent applications or patents of the IC other than the Licensed Patent Rights regardless of whether these patents are dominant or subordinate to the Licensed Patent Rights.
4. Sublicensing
4.1 The Licensee has no right to sublicense.
5. Statutory And NIH Requirements And Reserved Government Rights
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5.2 The Licensee agrees that products used or sold in the United States embodying Licensed Products or produced through use of Licensed Processes shall be manufactured substantially in the United States, unless a written waiver is obtained in advance from the IC.
10. Performance And Diligence Obligations
10.1 The Licensee shall use its reasonable commercial efforts to bring the Licensed Products and Licensed Processes to Practical Application. “Reasonable commercial efforts” for the purposes of this provision shall include adherence to the Commercial Development Plan in Appendix E and performance of the Benchmarks in Appendix D.