Provision Language
Definitions
“Company Biomarker Platform IPRs” means all IPRs owned or controlled by the Company that cover or claim the Company’s proprietary data-driven platform that operates to discover or identify biomarkers useful for identifying responsive patients and for quantifying drug effects to drive drug development using certain markers and measures (including all databases, algorithms, source code, and methods relating thereto) (the “Company Biomarker Platform”). For clarity, the Company Biomarker Platform comprises both a platform for discovery of biomarkers and a platform for the detection of the presence or absence of any such biomarkers in data related to a particular person.
10. OBLIGATIONS OF THE COMPANY
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10.2 Prohibited actions. The Company undertakes to Wellcome (so far as it is legally able and complying with such undertakings is permissible under applicable securities regulations) that the Company shall not do any of the following whilst the Loan is outstanding without the prior written consent of Wellcome (which shall not be unreasonably withheld, conditioned or delayed) in a manner that would impact the Project or Company’s ability to comply with this Agreement:
(a) enter into any transactions involving any of the Background IPRs or Project IPRs which would materially limit or adversely affect the Company’s ability to progress the Project; […]
14. PROJECT IPRS: EXPLOITATION
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14.2 The Company will not assign or license the right to commercially exploit the Project IPRs to any third party unless such third party agrees in writing to comply with obligations equivalent to the Company Diligence Obligations.
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14.4 Wellcome exploitation rights. Solely if Products in the Field remain unexploited or not further developed by the Company and/or their licensees in any indication (whether in or outside the Field) in any country at least five (5) years following completion of the Project, and provided that any failure to exploit the Products in the Field is not the result of bona fide safety or efficacy concerns, Wellcome shall have the option to give written notice to the Company that it wishes to take responsibility on behalf of the Company for the development and exploitation of such Products (and the Project IPRs relating thereto) in the relevant countries, solely in the Field. Such right includes discretion to make the final decisions (following good faith consultation with the Company) regarding the negotiation, acceptance and conclusion of terms for any agreement regarding the development and exploitation of the Project IPRs and Products in the Field (including development and exploitation by way of licence, sale, assignment, materials transfer or other transfer of rights), provided that the foregoing shall not be deemed to grant to Wellcome any rights to grant licenses or other rights in or to the Company’s Background IPRs, except to the extent provided in Section 14.5(b) below.
14.5 If Wellcome exercises its right to exploit the Products and Project IPRs in the Field on behalf of the Company under Clause 14.4: within one hundred eighty (180) days of receipt of Wellcome’s written notice exercising its right to exploit, the Company shall:
(a) grant to Wellcome licences (in good faith and on a sublicensable basis and on the financial terms set out at Clause 14.8) under the Project IPRs and the rights to exploit Products in the Field in the relevant countries to Wellcome or its nominee, and provideWellcome or its nominee with access to any associated data, documents, materials, master files, regulatory approvals or information as required for Wellcome or its nominee to develop and exploit the Project IPRs and Products in the Field in the relevant countries, provided that for clarity, such transfer shall in no event include any access to or enablement with respect to any Company Biomarker Platform IPRs. Wellcome (or its nominee) shall be responsible for all reasonable out of pocket costs associated with any such access;
(b) grant to Wellcome or its nominee a sublicensable (licence to the Background IPRs solely to the extent that they are required to develop and exploit the Project IPRs and Products in the Field. Any sublicense under the Background IPRs shall be sublicenseable solely in conjunction with a license of substantially similar scope under the Project IPRs (i.e. no naked sublicensing permitted). Notwithstanding the foregoing, the licences granted by the Company to Wellcome under the foregoing sentence shall not include any licences under or right of access to the CompanyBiomarker Platform IPRs, unless and solely to the extent that such access and use of the Company Biomarker Platform IPRs are necessary for the exploitation of the Products in the Field, in which case, if Wellcome requests that Company grant a licence under or access to the Company Biomarker Platform IPRs, then (i) the Company shall not unreasonably withhold its consent to grant a right of use or access to the Company Biomarker Platform IPRs, which right of use or access may be provided, at the Company’s sole discretion, by way of a licence grant to Wellcome, or by the provision of rights of access or biomarker-related services to Wellcome by or on behalf of the Company in connection with Wellcome’s proposed exploitation in the Field, and (ii) the Parties shall negotiate in good faith to agree upon the terms (including commercially reasonable financial terms) that would apply to the licence, right of access or receipt of biomarker services by Wellcome under such Company Biomarker Platform IPRs in such country in theField, and (iii) the Parties would also agree upon intellectual property ownership provisions with respect to any improvements and/or modifications to the Company Biomarker Platform made by or on behalf of Wellcome in connection with such exploitation of the Products in the Field. Except as provided in the foregoing with respect to the Company Biomarker Platform IPRs, any such licence grant under Background IPRs shall be non-exclusive and free of charge other than for costs that are incurred in respect of necessary third-party licences; and
(c) transfer to Wellcome or its nominee any materials, data and know-how necessary for Wellcome or its nominee to enable development and manufacture of Products in the Field, provided that for clarity, such transfer shall in no event include transfer of any Company Biomarker Platform IPRs. Wellcome (or its nominee) shall be responsible for all reasonable out of pocket costs associated with any such transfer.
14.6 In the event that the Parties acting in good faith are unable to agree the terms of the licences or assignments referred to in Clause 14.5 above in connection with the Project IPRs and the Products within the one hundred eighty (180) day time period, the Parties shall escalate the dispute for resolution by a senior executive of each Party, who shall attempt to resolve the dispute within a further thirty (30) days. If the Parties remain unable to resolve the dispute, any Party may refer the matter for resolution in accordance with Clause 16 prior to referral for final resolution under Clause 27.
14.7 Where any Wellcome nominee referred to in Clause 14.5 above is not acceptable to the Company (acting in good faith) on reasonable grounds, the Company shall notify Wellcome promptly in writing of the objection and the reasonable grounds, Wellcome shall not appoint such third party as its nominee (unless subsequently approved by an Expert) and Wellcome shall propose an alternative nominee. Where the Parties are unable to agree upon a mutually acceptable Wellcome nominees, the Parties shall escalate the dispute for resolution by a senior executive of each Party, who shall attempt to resolve the dispute within a further thirty (30) days. If the Parties remain unable to resolve the dispute, any Party may refer the matter for resolution in accordance with Clause 16 prior to referral for final resolution under Clause 27.
14.8 If Wellcome exercises its right to exploit under Clause 14.4:
(a) Wellcome shall share Project Revenues and Equity Holdings received from such exploitation 50:50 Trust: the Company after reimbursement of Wellcome’s direct costs; and
(b) the Company shall use reasonable efforts to procure that the Principal Investigator and other members of its staff who contributed to the creation of Project IPRs will give reasonable assistance to Wellcome in relation to the development and exploitation of the Project IPRs.