Grant of license

Formal statement of license rights in contract document.

Formal statement of license rights in contract document

Formal statement of license rights in contract document.

The grant clause will normally provide a detailed outline of the rights granted from the licensor to the licensee, including but not limited to rights to exploit intellectual property, field(s) of use, and territory(s).

Clause:

2.1 Grant of License

2.1.1 Subject to the terms and conditions of this Agreement, ACCESS hereby grants to WYETH (a) the exclusive right and license in the Field under ACCESS's Intellectual Property Rights to market, offer for sale, sell and import products, including the Product, in the Territory, (b) the exclusive right and license in the Field under ACCESS's Intellectual Property Rights to use the Product in the Territory, provided that such right and license is limited to such use as is necessary for WYETH to market, offer for sale, sell, import and, subject to the terms and conditions set forth in Section 2.6, Manufacture the Product in the Territory, and (c) a non- exclusive right and license to use the Product and all information and Intellectual Property Rights with respect thereto (including, without limitation, data, studies and clinical trials) solely for the purpose of obtaining Regulatory Approvals for the Product. Except as expressly granted herein, ACCESS retains all rights in the Intellectual Property Rights and the Product.

2.1.2 Except as specifically provided to the contrary in Section 2.1.1, the license granted in Section 2.1.1 shall not be construed (a) to effect any sale of ACCESS's Intellectual Property Rights or any other proprietary ACCESS technology; (b) subject to the terms and conditions set forth in Section 2.6, to grant any license relating to ACCESS's methods of formulating, fabricating and Manufacturing the Product; (c) to grant WYETH any rights in or to the use of the Intellectual Property Rights by implication or otherwise. WYETH shall mark or have marked all containers or packages of the Product in accordance with the patent marking laws of the jurisdiction in which such units of Product are to be used or distributed.

2.1.3 Upon expiration of the Term in any country due solely to the expiration of the last-to-expire patent within the Patents in such country, WYETH shall have a non-exclusive, fully paid up license to those licenses set forth in Section 2.1.1.

2.1.4 Subject to the terms and conditions of this Agreement, ACCESS hereby grants to WYETH an exclusive, non-transferable (except in accordance with a permitted assignment of this Agreement under Section 13.3) license in the Field to use ACCESS's "ORADISC" trademark (the "Mark") solely in connection with the production, marketing and sale of the Product under this Agreement, within the Territory. Based on the information provided by ACCESS, WYETH acknowledges that ACCESS is the exclusive owner of the Mark and all associated goodwill and registrations. WYETH agrees that it has no rights to use the Mark except for the right to use the Mark as provided for in this Agreement and all uses of the Mark by WYETH, and the associated goodwill, shall inure solely to the benefit of ACCESS. WYETH further agrees that upon the termination or expiration of this Agreement, all right to use the Mark provided to WYETH hereby shall revert fully to ACCESS. WYETH shall faithfully reproduce the Mark's design and appearance, as such design and/or appearance may be modified from time to time by ACCESS. WYETH shall not modify the design or appearance of the Mark unless requested to do so in writing by ACCESS. All uses of the Mark shall be subject to ACCESS's prior written approval on the basis of samples submitted by WYETH and shall be made in strict conformance with such specifications as ACCESS shall establish, as such specifications may be modified by ACCESS from time to time. All displays of the Mark shall bear such trademark notices as ACCESS shall require. Except as consistently with this Agreement with respect to the Product, WYETH shall not (a) use the Mark as part of, or in conjunction with, any other names or marks without ACCESS's prior written approval; (b) use the Mark or any confusingly similar marks, terms or designs, except as expressly authorized in this Section 2.1.4; (c) attempt to register any such marks, terms or designs; (d) take any actions inconsistent with ACCESS's ownership of the Mark and any associated registrations, or attack the validity of the Mark, ACCESS's ownership thereof, or any of the terms of this Section 2.1.4; (e) use the Mark in any manner that would indicate WYETH is using such Mark other than as a licensee of ACCESS; nor (f) assist any Affiliate or Third Party to do any of the same. ACCESS, and/or its authorized agents or representatives, shall have the right from time to time, upon reasonable notice to WYETH, to inspect WYETH's (or its contractors') facilities and operations during regular business hours, that are involved in the Manufacture of the Product pursuant to Section 2.6; provided that such inspections shall be subject to, and ACCESS shall require its authorized agents and representatives to agree in writing to, the confidentiality provisions set forth in Section 9 of this Agreement. Upon ACCESS's request, WYETH shall provide ACCESS with examples of all uses of the Mark as actually used by WYETH, and a reasonable number of actual samples of the goods produced, marketed and sold by WYETH under the Mark. WYETH agrees to cooperate with and offer reasonable assistance to ACCESS in facilitating ACCESS's control of the quality of the Product (and associated labels and marketing materials and other documentation) branded with the Mark hereunder.

-- License and Supply agreement between Access and Wyeth, January 2004

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