TO THIRD PARTIES WITH WHICH LICENSEE
HAS A WRITTEN AGREEMENT UNDER WHICH LICENSEE AND SUCH THIRD PARTIES COLLABORATE
ON RESEARCH WITHIN THE RESEARCH AND DEVELOPMENT FIELD; PROVIDED THAT,
(I) LICENSEE HAS PROVIDED CHIRON WITH PRIOR WRITTEN NOTICE IDENTIFYING ANY SUCH
THIRD PARTY AND THE SCOPE OF THE COLLABORATION (WHICH NOTICE MAY BE PROVIDED
PRIOR TO EXECUTION OF SUCH AGREEMENT, PROVIDED THAT NEGOTIATIONS OF SUCH
AGREEMENT HAVE COMMENCED, OR DURING THE TERM OF SUCH AGREEMENT); (II) THAT THE
PROPOSED SCOPE OF THE SUBLICENSE IS LIMITED TO THE RESEARCH IN THE RESEARCH AND
DEVELOPMENT FIELD, DOES NOT GRANT THE RIGHT FOR COMMERCIALIZATION OF ANY
IDENTIFIED PRODUCTS, AND, IN ANY EVENT, DOES NOT EXCEED THE SCOPE OR DURATION OF
THE LICENSE GRANTED TO LICENSEE UNDER SECTION 2.1; (III) CHIRON DOES NOT WITHIN
THIRTY (30) DAYS AFTER ITS RECEIPT OF SUCH WRITTEN NOTICE REASONABLY OBJECT IN
WRITING TO THE GRANT OF SUCH SUBLICENSE; (IV) SUCH THIRD PARTY AGREES TO BE
BOUND BY ALL OF THE APPLICABLE TERMS AND CONDITIONS OF THIS AGREEMENT (INCLUDING
ARTICLE 5); AND (V) SUCH SUBLICENSE SHALL TERMINATE UPON THE EXPIRATION OR
TERMINATION OF ITS WRITTEN AGREEMENT WITH LICENSEE WITH RESPECT TO SUCH
COLLABORATION WITH LICENSEE.
FOR THE PURPOSES OF SECTION 2.2.1(III), IT SHALL
NOT BE UNREASONABLE FOR CHIRON TO WITHHOLD OR DELAY CONSENT IF CHIRON REASONABLY
BELIEVES THAT THE PROPOSED THIRD PARTY (A) HAS OR IS INFRINGING ANY CHIRON
PATENT RIGHTS OR (B) HAS OR IS CHALLENGING THE VALIDITY OF ANY CHIRON PATENT
RIGHTS.
2.2.2.
NOTWITHSTANDING THE FOREGOING, LICENSEE MAY SUBLICENSE, OR OTHERWISE
GRANT OR AUTHORIZE,
THIRD PARTIES TO MARKET, DISTRIBUTE, SELL OR OTHERWISE
COMMERCIALIZE ANY IDENTIFIED PRODUCT, PROVIDED THAT (I) LICENSEE SHALL REMAIN
OBLIGATED TO MAKE APPLICABLE MILESTONE AND ROYALTY PAYMENTS UNDER SECTION 3.1
FOR SUCH IDENTIFIED PRODUCTS AND (II) SUCH THIRD PARTIES SHALL BE SUBJECT TO ALL
OBLIGATIONS OF LICENSEE UNDER THIS AGREEMENT (INCLUDING PAYMENT, REPORTING AND
INDEMNITY PROVISIONS); PROVIDED THAT NEITHER LICENSEE NOR ANY SUCH THIRD PARTY
SHALL BE REQUIRED TO MAKE DUPLICATE PAYMENTS FOR ANY ONE IDENTIFIED PRODUCT FOR
WHICH PAYMENT HAS BEEN RECEIVED BY CHIRON.
2.3.
ACQUIRED COMPOUNDS. LICENSEE SHALL PROVIDE CHIRON PRIOR WRITTEN
NOTICE (THE "THIRD PARTY NOTICE") IF LICENSEE SEEKS TO OBTAIN FROM ANY THIRD
PARTY TO WHICH CHIRON HAS NOT GRANTED A LICENSE UNDER CHIRON PATENT RIGHTS TO
PRACTICE LICENSED PROCESSES IN THE RESEARCH AND DEVELOPMENT FIELD (A "THIRD
PARTY LICENSOR") A LICENSE OR OTHER RIGHT (AN "IN-LICENSE") TO MAKE, HAVE MADE,
USE, HAVE USED, SELL, HAVE SOLD, IMPORT, OR EXPORT ANY COMPOUND OWNED OR
CONTROLLED BY SUCH THIRD PARTY LICENSOR THAT (I) IS A SIRNA OR ANTISENSE
COMPOUND THAT HAS THERAPEUTIC APPLICATIONS FOR HCV INFECTION, (II) IS NOT WITHIN
THE EXCLUDED APPLICATIONS, AND
6
(III) IS REASONABLY LIKELY TO HAVE BEEN IDENTIFIED, DISCOVERED OR GENERATED
THROUGH THE PRACTICE OF LICENSED PROCESSES.
THE THIRD PARTY NOTICE SHALL
IDENTIFY (A) EACH COMPOUND (BUT NOT STRUCTURES) SOUGHT FROM THE THIRD PARTY
LICENSOR, (B) THE TARGETS OF ACTION OF SUCH COMPOUND TO THE EXTENT KNOWN, (C)
THE DATE ON WHICH LICENSED PROCESSES ARE BELIEVED