EITHER (I)
A CONTRACT MANUFACTURING ORGANIZATION (CMO) FOR THE DIRECT MANUFACTURE OF VICAL
PRODUCTS OR (II) IN CONNECTION WITH A WRITTEN BONA-FIDE RESEARCH, DEVELOPMENT
AND COLLABORATION AGREEMENT WITH A THIRD PARTY, TO:
(A)
MAKE, HAVE MADE, USE (BY A CONTRACT MANUFACTURING ORGANIZATION
SOLELY FOR THE DIRECT MANUFACTURING OF VICAL PRODUCTS), EXPORT AND IMPORT VICAL
PRODUCTS;
2.2
NO IMPLIED RIGHTS.
ONLY THE LICENSES GRANTED PURSUANT TO THE
EXPRESS TERMS OF THIS AGREEMENT SHALL BE OF ANY LEGAL FORCE OR EFFECT.
NO OTHER
LICENSE RIGHTS SHALL BE GRANTED OR CREATED BY IMPLICATION, ESTOPPEL OR
OTHERWISE.
FOR THE AVOIDANCE OF DOUBT, BY EXAMPLE ONLY AND WITHOUT EXPANDING OR
NARROWING THE LICENSE GRANTS OF SECTIONS 2.1, THE GRANTS OF RIGHTS MADE PURSUANT
TO SECTIONS 2.1 DO NOT INCLUDE, AND EXPRESSLY EXCLUDE, ANY RIGHT OR LICENSE (A)
TO ENGAGE IN ANY ACTIVITIES ON BEHALF OF OR IN COLLABORATION WITH ANY THIRD
PARTY (OTHER THAN, IN THE CASE OF VICAL, AS APPLICABLE), OR (B) TO RELEASE OR
WAIVE ANY CLAIM OF INFRINGEMENT UNDER ANY PATENT OR PATENT APPLICATION OWNED OR
CONTROLLED BY VALENTIS OR ITS AFFILIATES, INCLUDING, WITHOUT LIMITATION, THE
PATENT RIGHTS.
2.3
OWNERSHIP; ENFORCEMENT; NO CHALLENGE.
(A)
VALENTIS OWNS THE LICENSED TECHNOLOGY, INCLUDING ALL EMBODIMENTS
OF THE PATENT RIGHTS OR THE KNOW-HOW, AND MAY FREELY USE AND COMMERCIALIZE SUCH
LICENSED TECHNOLOGY ITSELF OR WITH THIRD PARTIES.
VALENTIS RETAINS THE RIGHT,
AT ITS SOLE DISCRETION, TO ENFORCE, MAINTAIN AND OTHERWISE PROTECT THE LICENSED
TECHNOLOGY.
VICAL SHALL GIVE VALENTIS NOTICE OF ANY INFRINGEMENT BY A THIRD
PARTY OF ANY PATENT OR PATENT APPLICATION OWNED OR CONTROLLED BY VALENTIS OR
MISAPPROPRIATION OF THE KNOW-HOW WHICH COMES TO VICAL'S KNOWLEDGE DURING THE
TERM OF THIS AGREEMENT.
VICAL WILL COOPERATE ON A COMMERCIALLY REASONABLE BASIS
WITH VALENTIS WITH RESPECT TO ANY ACTIONS VALENTIS MAY CHOOSE TO TAKE PURSUANT
TO THIS SECTION 2.4, AND VALENTIS WILL REIMBURSE VICAL FOR ITS REASONABLE COSTS
IN THIS REGARD.
2
(B)
EXCEPT AS REQUIRED UNDER APPLICABLE LAW, VICAL SHALL NOT
PARTICIPATE, DIRECTLY OR INDIRECTLY, IN ANY OPPOSITION OR CHALLENGE TO THE
VALIDITY OR ENFORCEABILITY OF ANY PATENT IN ANY FORUM AND VICAL SHALL NOT ASSIST
ANY THIRD PARTY IN ANY SUCH PARTICIPATION.
ANY BREACH BY VICAL OF THIS SECTION
2.5(B) SHALL CONSTITUTE A MATERIAL BREACH OF THIS AGREEMENT AND ANY LICENSES OR
RIGHTS GRANTED HEREUNDER MAY, AT VALENTIS' OPTION, BE TERMINABLE.
2.4
REPORTS, RECORDS AND AUDITS.
(A)
VICAL SHALL MAINTAIN RECORDS FULLY AND PROPERLY REFLECTING THOSE
ACTIVITIES TO BE REPORTED TO VALENTIS PURSUANT TO SECTION 2.6(A) (THE "RECORDS")
IN SUFFICIENT DETAIL AND IN GOOD SCIENTIFIC MANNER APPROPRIATE FOR PATENT,
REGULATORY AND MANUFACTURING PURPOSES FOR AT LEAST THREE (3) YEARS AFTER THE
DATE OF DELIVERY OF THE REPORT CONTAINING SUCH INFORMATION.
UPON THE WRITTEN
REQUEST OF VALENTIS AND NOT MORE THAN ONCE IN EACH CALENDAR YEAR, VICAL SHALL
PERMIT AN INDEPENDENT THIRD PARTY, SELECTED BY VALENTIS AND REASONABLY
ACCEPTABLE TO VICAL, AT VALENTIS' EXPENSE, TO HAVE ACCESS DURING NORMAL BUSINESS
HOURS TO SUCH OF THE RECORDS OF VICAL AS MAY BE REASONABLY NECESSARY TO VERIFY