TERM, CHIRON HEREBY GRANTS TO GEN-PROBE A LICENSE UNDER ALL
INTELLECTUAL PROPERTY RIGHTS OF CHIRON NOW-OWNED OR HEREAFTER ACQUIRED TO THE
EXTENT REASONABLY NECESSARY FOR GEN-PROBE TO PERFORM ITS OBLIGATIONS UNDER THE
ESAS 2 DEVELOPMENT PROGRAM AND FOR THE MANUFACTURE, USE OR SALE OF ESAS 2
INSTRUMENTS IN THE CLINICAL DIAGNOSTIC FIELD, BUT ONLY TO THE EXTENT THAT CHIRON
HAS OR HEREAFTER ACQUIRES AN OWNERSHIP OR OTHER LICENSABLE INTEREST IN SUCH
INTELLECTUAL PROPERTY RIGHTS AND HAS THE RIGHT TO GRANT LICENSES, IMMUNITIES OR
OTHER RIGHTS THEREUNDER.
THE LICENSES HEREBY GRANTED SHALL EXTEND ONLY TO THE
EXTENT OF THE DESIGN OF THE ESAS 2 INSTRUMENT AS OF THE DATE OF THIS ESAS 2
ADDENDUM AND TO ANY FUTURE DESIGN MODIFICATIONS APPROVED AND ADOPTED IN
ACCORDANCE WITH THE TERMS HEREOF.
THE LICENSE HEREBY GRANTED SHALL BE
ROYALTY-FREE EXCEPT TO THE EXTENT THE LICENSING PARTY HAS AN OBLIGATION TO PAY
ROYALTIES TO A THIRD PARTY PURSUANT TO THE AGREEMENT.
THE LICENSE GRANTED BY
GEN-PROBE IN SECTION 3.3.5(C) OF THE AGREEMENT SHALL APPLY TO THE MANUFACTURE OF
ESAS 2 INSTRUMENTS BY OR FOR CHIRON FOR USE IN THE BLOOD SCREENING FIELD.
EXCEPT AS EXPRESSLY PROVIDED HEREIN, NEITHER PARTY GRANTS TO THE OTHER PARTY ANY
LICENSE OR OTHER INTEREST IN AND TO SUCH PARTY'S INTELLECTUAL PROPERTY RIGHTS OR
OTHER RIGHTS.
FOR THE AVOIDANCE OF DOUBT, NOTHING IN THIS SECTION 7.2 SHALL BE
CONSTRUED AS A GRANT BY CHIRON TO GEN-PROBE FOR AN EXPRESS OR IMPLIED LICENSE
IN, TO OR UNDER THE CHIRON HIV PATENT RIGHTS OR THE CHIRON HCV PATENT RIGHTS.
7.3
[***] IMMUNITY.
FOR THE AVOIDANCE OF DOUBT, [***] CONFIRMS THAT
[***] SHALL BE ENTITLED TO THE BENEFIT OF THE IMMUNITY FROM SUIT PREVIOUSLY
GRANTED TO [***], AND SUBJECT TO THE LIMITATIONS AS GRANTED TO [***], BY [***]
AND [***] UNDER THE [***] RELATED PATENTS, WHICH IMMUNITY WAS PREVIOUSLY GRANTED
TO [***] (AND A PARTY TO BE DESIGNATED BY [***]) BY [***] AND [***].
18
8.
ADDENDUM EFFECTIVE DATE; TERM; TERMINATION.
8.1
TERM OF ESAS 2 ADDENDUM.
THIS ESAS 2 ADDENDUM SHALL BECOME
EFFECTIVE ON THE ADDENDUM EFFECTIVE DATE AND SHALL CONTINUE IN EFFECT THROUGH
THE BLOOD SCREENING TERM, AS IT MAY BE AMENDED OR EXTENDED FROM TIME TO TIME,
UNLESS SOONER TERMINATED IN ACCORDANCE WITH THE PROVISIONS HEREOF.
TERMINATION
OF THIS ESAS 2 ADDENDUM SHALL BE GOVERNED BY THE TERMS OF THIS SECTION 8 AND
TERMINATION OF THE AGREEMENT IS GOVERNED BY SECTION 11 OF THE AGREEMENT.
8.2
TERMINATION FOR BREACH.
8.2.1
DEFAULT. EITHER PARTY (THE "NONDEFAULTING PARTY")
HAS THE RIGHT, UPON WRITTEN NOTICE TO THE OTHER PARTY (THE "DEFAULTING PARTY"),
TO TERMINATE THE ESAS 2 DEVELOPMENT PROGRAM, UPON THE OCCURRENCE OF ANY OF THE
FOLLOWING EVENTS OF DEFAULT AND THE EXPIRATION OF ANY APPLICABLE PERIOD OF TIME
FOR CURE:
(A)
IF A PARTY FAILS TO MAKE A PAYMENT REQUIRED UNDER SECTIONS 5.3.1 OR 5.3.3
HEREUNDER;
(B)
IF A PARTY INVOICES FOR AMOUNTS USING EXPENDITURES NOT FALLING WITHIN THE
DEFINITION OF ESAS 2 DEVELOPMENT COSTS OR NOT INCLUDED WITHIN THE BUDGET.
(C)