Provision Language
15.0 TERMINATION
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15.5 Effect on Sub-licensees. All sub-licenses, including those granted to Affiliates and to Merck, shall terminate with the License Agreement. If Merck has notified Canada of its desire to enter into a Direct Merck License, Canada shall grant a temporary license on the same terms and conditions as those set out in this License Agreement, with the exceptions set out in 15.8.1, 15.8.2 and 15.8.3. This temporary license shall be granted on a month to month basis and until such time as a Direct Merck License is executed pursuant to section 15.8. Canada and Merck shall make their best efforts to finalize and sign the Direct Merck License as soon as reasonably possible.
During the temporary license period, any and all royalties that would have been payable to Canada by the Company under this License Agreement (including amounts that would have been paid under paragraph 5.4 of this License Agreement had the sub-license agreement between the Company and Merck survived) shall be paid to Canada by Merck or its affiliate, as applicable).
15.6 Duties on Termination or Expiration
A) Upon termination of the License Agreement by Canada, the Company shall at its own cost:
15.6.1 return immediately to Canada all Licensed Rights and Confidential Information of Canada, including copies thereof;
15.6.2 certify in writing to Canada within thirty (30) days of termination, that to the best of the Company’s knowledge, all of the Confidential Information (including copies) of Canada has been returned;
15.6.3 deliver a detailed statement to Canada of the inventory of the products made from the exercise of the Licensed Rights then existing, but not sold by the Company, as of the date of termination;
15.6.4 provide Canada the right of first refusal to purchase from the Company any products made from the exercise of the Licensed Rights inventory at fair market value;
15.6.5 dispose of any remaining products made from the exercise of the Licensed Rights in inventory as specified by Canada subject always to any obligations under Article 5.0 (Fees & Royalties);
15.6.6 pay all costs due under the License Agreement either by the Company on its behalf or a sub-licensee, up to and including the termination date, within thirty (30) days of the termination;
15.6.7 pay all costs due under the License Agreement, subsequent to the termination, for any products made from the exercise of the Licensed Rights sold after termination, within thirty (30) days of the liability being incurred;
15.6.8 grant back to Canada any technology rights, clinical or research data arising from the Licensed Rights or otherwise under the License Agreement;
15.6.9 assign to Canada (or her nominee) any equities, goodwill, or other similar rights which the Company has or alleges to have acquired in the Licensed Rights or derived in the Commercialization. The Company shall also execute such further documentation as Canada may reasonably request in order to confirm such assignment;
15.6.10 pay immediately to Canada any royalties, fees, reimbursements or other financial obligations irrespective of the fact such monies are owed, but for the termination, not yet payable; and
15.6.11 assign or transfer for [*] in total consideration, any and all authorizations, permits, certificates or other regulatory permissions obtained in order to Commercialize, to any third party identified by Canada or to Canada itself, within ninety (90) days of termination, unless otherwise requested by Canada.
B) Upon expiration of the License Agreement on July 28, 2033 (save and except for any rights and obligations that survive expiration): i) the Company (including Merck and its affiliates and its sub-sub-licensees) shall thereafter be forever released from the obligations set forth in Article 11.0 (Confidentiality/Fiduciary Obligations & Equitable Remedies) with respect to Canada’s Confidential Information and can use Canada’s Confidential Information without obtaining permission from Canada or making payment to Canada; and ii) Canada can use Canada’s Confidential Information as it sees fit.
15.7 Surviving Obligations. All obligations of the Parties which expressly or by their nature survive termination or expiration, shall continue in full force and effect subsequent to and notwithstanding such termination or expiration, until they are satisfied or by their nature expire. For greater clarity, and without restricting the generality of the foregoing, the following provisions survive termination or expiration:
15.7.1 Paragraph 2.2 (Carve Out);
15.7.2 Article 5.0 (Fees and Royalties);
15.7.3 Article 6.0 (Records & Audit);
15.7.4 Paragraphs 8.4 to 8.6 (Improvements – Ownership, Company Improvements – Disclosure, Company Improvements – License to Canada);
15.7.5 Article 11.0 (Confidentiality / Fiduciary & Equitable Remedies); provided that such Article 11.0 shall survive the expiration or termination of this Agreement for the period of time set forth in Article 11;
15.7.6 Article 13.0 (Indemnity, Insurance and Liability Allocation & Caps); and
15.7.7 Paragraph 15.6 (Duties on Termination or Expiration).
15.8 Termination of License Agreement – Direct License to Merck. If Canada terminates this License Agreement under section 15.1 (By Canada for Cause) or if this License Agreement is automatically terminated under section 15.2.1 (Automatic Termination – Assignment), Canada shall give Merck written notice of such termination, and shall, at the written request of Merck, delivered within thirty (30) calendar days of receipt of such notice, enter into a direct license with Merck or its affiliate on the same terms and conditions as the License Agreement (except as set forth below) provided that Merck is not the cause of such termination (a “Direct Merck License“). If the License Agreement is terminated under section 15.2.2 (Automatic Termination – Bankruptcy), Canada shall endeavour, on the same basis as set out above, to enter into a Direct Merck License with Merck or its affiliate if such a written request is made by Merck and insofar as this is possible under applicable bankruptcy and insolvency laws. For clarity, if Merck or its affiliate enters into a Direct Merck License, then Merck or its affiliate (as applicable) shall no longer be considered a sub-licensee of Company with respect to the Licensed Rights under the License Agreement.
The Direct-Merck License will contain the same terms and conditions as this License Agreement except:
15.8.1. Under the Direct Merck License, any and all royalties that would have been payable to Canada by the Company under this License Agreement (including amounts that would have been paid under paragraph 5.4 of this License Agreement had the sub-license agreement between the Company and Merck survived) shall be paid to Canada by Merck;
15.8.2 Notwithstanding anything to the contrary contained in this License Agreement, Canada’s consent shall not be required with respect to the assignment of the Direct Merck License in connection with a Change of Control of Merck (or its affiliate); and
15.8.3 Section 18.3.9 shall not apply if the Company had previously made a payment under section 18.3.9 of the License Agreement.
In all cases, if Merck’s sub-license from the Company is terminated, the Company shall give Merck [*], starting from the date of termination, to allow Merck (and its affiliates, sub-sublicensees and subcontractors) to continue to exercise the Licensed Rights in order to: (i) finish or wind-down any ongoing clinical trials and any work-in-progress; and (ii) sell any products remaining in inventory, that resulted from the exercise of the Licensed Rights, and the sub-license granted by the Company to Merck for the Licensed Rights. shall continue for such purposes.