AN EXCLUSIVE LICENSE TO GSK UNDER THIS SECTION 5.2, AND SOLELY WITH
RESPECT TO THE COLLABORATION COMPOUNDS, OPTION COMPOUNDS AND LICENSED PRODUCTS
UNDER THE PROGRAM FOR WHICH GSK EXERCISES ITS PROGRAM OPTION OR TO WHICH SUCH
PROGRAM TERMINATION UNDER ARTICLE 12 APPLIES, REGULUS HEREBY GRANTS TO GSK,
EFFECTIVE AS OF THE DATE OF SUCH EXERCISE OF THE RELEVANT PROGRAM OPTION (EXCEPT
TO THE EXTENT SET FORTH IN SECTION 12.7.3(D)) OR THE DATE OF OPERATION OF SUCH
PROVISION UNDER ARTICLE 12, A WORLDWIDE, EXCLUSIVE, ROYALTY-BEARING (ONLY IN
ACCORDANCE WITH SECTION 6.6.1 AND SECTION 6.6.2 AND SUBJECT TO SECTIONS
12.7.3(A), 12.7.3(B), 12.7.3(C), 12.7.5 AND 12.7.7(D)), SUBLICENSEABLE (IN
ACCORDANCE WITH SECTION 5.2.2 BELOW) LICENSE IN THE FIELD, UNDER THE REGULUS
TECHNOLOGY AND REGULUS' RIGHTS UNDER ANY COLLABORATION TECHNOLOGY,
(A)
TO DEVELOP MIRNA COMPOUNDS AND MIRNA THERAPEUTICS,
(B)
TO MANUFACTURE MIRNA COMPOUNDS AND MIRNA THERAPEUTICS, AND
(C)
TO COMMERCIALIZE MIRNA COMPOUNDS AND MIRNA THERAPEUTICS.
5.2.2
SUBLICENSE RIGHTS.
SUBJECT TO THIRD PARTY AND PARENT-ORIGINATED
RIGHTS AND OBLIGATIONS AND TO THE TERMS AND CONDITIONS OF THIS AGREEMENT
(INCLUDING WITHOUT LIMITATION SECTION 12.7.3(D)), GSK SHALL HAVE THE RIGHT TO
GRANT TO ITS AFFILIATES AND/OR THIRD PARTIES SUBLICENSES UNDER THE LICENSES
GRANTED UNDER SECTION 5.2.1 ABOVE; PROVIDED, THAT, EACH SUCH SUBLICENSE SHALL BE
SUBJECT AND SUBORDINATE TO, AND CONSISTENT WITH, THE APPLICABLE TERMS AND
CONDITIONS OF THIS AGREEMENT.
[***]; PROVIDED, THAT FOR AGREEMENTS THAT ARE
ENTERED INTO BY GSK OR ITS AFFILIATES AFTER THE EFFECTIVE DATE, WHERE GSK HAS OR
CAN READILY [***] UNDER OBLIGATIONS OF CONFIDENTIALITY WHICH ARE NO LESS STRICT
THAN THE CONFIDENTIALITY OBLIGATIONS IMPOSED UPON REGULUS
57
HEREUNDER.
GSK WILL REMAIN RESPONSIBLE FOR THE PERFORMANCE OF ITS AFFILIATES
AND SUBLICENSEES, AND WILL ENSURE THAT ALL SUCH AFFILIATES AND SUBLICENSEES
COMPLY WITH THE RELEVANT PROVISIONS OF THIS AGREEMENT.
5.2.3
TRADEMARKS FOR LICENSED PRODUCTS.
IF GSK HAS EXERCISED ITS PROGRAM
OPTION WITH RESPECT TO A PROGRAM HEREUNDER, TO THE EXTENT THAT REGULUS OWNS ANY
TRADEMARK(S) WHICH WERE USED PRIOR TO THE EXERCISE OF THE PROGRAM OPTION BY GSK
THAT ARE SPECIFIC TO ANY OPTION COMPOUND DEVELOPED UNDER SUCH PROGRAM AND GSK
REASONABLY BELIEVES SUCH TRADEMARK(S) WOULD BE REASONABLY NECESSARY OR USEFUL
FOR THE MARKETING AND SALE IN THE FIELD IN THE TERRITORY OF SUCH OPTION COMPOUND
OR RELATED LICENSED PRODUCTS, REGULUS SHALL, UPON GSK'S REQUEST [***], ASSIGN
ITS RIGHTS AND TITLE TO SUCH TRADEMARK(S) TO GSK REASONABLY IN ADVANCE OF THE
FIRST COMMERCIAL SALE OF SUCH LICENSED PRODUCTS.
OTHER THAN THE TRADEMARKS
DESCRIBED ABOVE WHICH ARE OWNED BY REGULUS PRIOR TO THE EXERCISE OF A PROGRAM
OPTION BY GSK, THE COMMERCIALIZING PARTY SHALL BE SOLELY RESPONSIBLE FOR
DEVELOPING, SELECTING, SEARCHING, REGISTRATION AND MAINTENANCE OF, AND SHALL BE
THE EXCLUSIVE OWNER OF ALL TRADEMARK(S), TRADE DRESS, LOGOS, SLOGANS, DESIGNS,
COPYRIGHTS AND DOMAIN NAMES USED ON AND/OR IN CONNECTION WITH ANY OF THE OPTION
COMPOUNDS AND LICENSED PRODUCTS RESULTING FROM A PROGRAM.
5.2.4
RETAINED RIGHTS.
THE EXCLUSIVE LICENSE GRANTED TO REGULUS BY
ALNYLAM PURSUANT TO SECTION 2.2(A) OF THE REGULUS LICENSE AGREEMENT IS SUBJECT
TO ALNYLAM'S RETAINED RIGHT