Provision Language
Definitions
“AS Assay” shall mean PTC’s proprietary technology for the identification of small molecules that cause Alternative Splicingof a gene of interest, including but not limited to SMN2.
“Invention” shall mean an invention that is conceived or reduced to practice in connection with any activity carried out pursuant to this Agreement. Under this definition, an Invention may be made by employees of PTC solely or jointly with a Third Party (a “PTC Invention”), by employees of the Roche Group solely or jointly with a Third Party (a “Roche Invention”), or jointly by employees of PTC and of a member of the Roche Group with or without a Third Party (a “Joint Invention”).
“Joint Know-How” shall mean Know-How that is made jointly by the Parties or their Affiliates or their Sublicensees in connection with any activity carried out pursuant to this Agreement.
“Joint Patent Rights” shall mean all Patent Rights Covering a Joint Invention.
“PTC Base Patent Rights” shall mean any and all Patent Rights in the Territory that are Controlled by PTC as of the Effective Date and either Cover a Product or relate to the discovery, manufacture, development or commercialization of a Product, said Patent Rights being exhaustively listed in Appendix 1.63 of this Agreement.
“PTC Know-How” shall mean the Know-How that PTC Controls at the Effective Date and during the Agreement Term.
“PTC Patent Rights” shall mean any and all Patent Rights that are Controlled by PTC during the Agreement Term and that either Cover a Product or relate to the discovery, manufacture, development or commercialization of a Product. The term PTC Patent Rights shall include PTC Base Patent Rights.
“Roche Background Patent Rights” shall mean any and all Patent Rights, excluding the Roche Product Patent Rights and the excluded Patent Rights identified in Appendix 1.72, that are Controlled by Roche during the Agreement Term and either Cover a Product or relate to the discovery, manufacture, development or commercialization of a Product.
“Roche Product Patent Rights” shall mean any and all Patent Rights that are Controlled by Roche during the Agreement Term and that Cover the composition of matter or the method of use of a Product.
“Territory” shall mean all countries of the world.
3. Grant of Licenses
3.1 License to Roche. Subject to Section 2.2.2, Section 3.2 and the other terms and conditions of this Agreement, PTC hereby grants to Roche and its Affiliates a royalty-bearing, exclusive (even as to PTC, but subject to the retained right of PTC to perform its obligations under the Research Program and its obligations (if any) under the Product Development Program) right and license, including the right to grant sublicenses in conformance with Section 3.3, under PTC’s interest in the PTC Patent Rights and PTC Know-How and PTC’s interest in the Joint Patent Rights and Joint Know-How to research, have researched, develop, have developed, register, have registered, use, have used, make, have made, import, have imported,export, have exported, market, have marketed, distribute, have distributed, sell and have sold Compounds and Products in the Field in theTerritory.
3.2 License to PTC. Roche hereby grants to PTC a non-exclusive, worldwide, paid-up right and license, without the right to sublicense, under the Roche Patent Rights and Roche Know-How and Roche’s interest in the Joint Patent Rights and Joint Know-How solely to enable PTC to perform its obligations under the Research Program during the Research Term and its obligations (if any) under the Product Development Program.
3.3 Sublicense. Roche and its Affiliates shall have the right to sublicense or subcontract to its Affiliates (with the right to grant sublicenses in conformance with this Section 3.3) and to any other Person (with no further right to sublicense), and shall have the right to use any contract manufacturer, distributor, subcontractor or outsourced service for the benefit of Roche and its Affiliates. For clarity, Roche need not obtain thepermission of PTC in order to enter into a sublicense or subcontract. Roche shall provide PTC with written notice of any such sublicense within [**] days after the execution thereof, such written notice to include (i) the identity of the Sublicensee, (ii) the Compound(s) and Product(s) that are the subject of the sublicense, (iii) whether such sublicense is exclusive, co-exclusive or non-exclusive, and (iv) the territory(-ies) covered by such sublicense. If Roche grants a sublicense, all of the terms and conditions of this Agreement shall apply to the Sublicensee to the same extent as they apply to Roche for all purposes of this Agreement, and the sublicense shall include provisions causing such sublicense to terminate upon anSRA Special Termination or PTC’s receipt of notice of any SRA Reversion Notice or SRA Buy-Out Notice and requiring such Sublicensee to provide Roche with all rights necessary or useful for Roche to comply with Section 2.2.2; Foundation shall be a third party beneficiary of such provisions. Roche assumes full responsibility for the performance of all obligations so imposed on such Sublicensee and will itself pay and account to PTC for all payments due under this Agreement by reason of operation of any such sublicense.
3.4 Rights Retained by the Parties. Any rights of PTC or Roche, as the case may be, not expressly granted to the other Party pursuant to this Agreement shall be retained by such Party. Without limiting the generality of the foregoing, no right or license is granted to Roche under the PTC Patent Rights and PTC Know-How and PTC’s interest in the Joint Patent Rights and Joint Know-How to research, have researched, develop, have developed, register, have registered, use, have used, make, have made, import, have imported, export, have exported, market, have marketed, distribute, have distributed, sell and have sold any composition that is not a Compound or Product. Except in the context of a mutually agreed Research Plan, the exclusive license granted hereunder excludes any right of Roche or its Affiliates to access or use the AS Assay or to grant any such rights to the AS Assay to any other Person.
6. Diligence
Roche and PTC shall use Commercially Reasonable Efforts to perform their respective activities contemplated by this Agreement or as may be agreed upon in any subsequent written agreements with respect to the subject matter hereof, including but not limited to any activities under the Research Program and the Product Development Program. Specifically, Roche agrees to use Commercially Reasonable Efforts to develop and commercialize Products in the Field as it relates to the treatment of humans having SMA and in the Territory and agrees to fulfill all diligence obligations imposed on PTC under the SRA. Roche further agrees to fulfill the same diligence obligations with respect to New Compound Development Candidates and New Products as are required under the SRA with respect to SRA Development Candidates and SRA Products, respectively.