DURING SUCH TWELVE-MONTH PERIOD,
INCLUDING ANTICIPATED COMPLETION DATES FOR ACTIVE PROJECTS AND PROPOSED START
DATES FOR NEW PROJECTS, AND (IV) ANY OTHER ACTIVITIES TO BE CARRIED OUT DURING
SUCH TWELVE-MONTH PERIOD IN SUPPORT OF ACHIEVING THE ANNUAL PROGRAM GOALS AND
WIND-DOWN OF ACTIVITIES AT THE END OF THE PROGRAM TERM.
3.6
ANNUAL REVIEWS.
BEGINNING ON OR ABOUT *,
AND EACH YEAR THEREAFTER DURING THE PROGRAM TERM, A JOINT TDCC-SYMYX TEAM SHALL
PRESENT TO THE ADVISORY COMMITTEE AND THE EXECUTIVE COMMITTEE AN EVALUATION OF
PROGRESS MADE AGAINST THE ANNUAL PROGRAM GOALS DURING THE PREVIOUS CALENDAR
YEAR.
Article 4
LICENSES
4.1
LICENSE TO TDCC.
4.1.1
LICENSE IN THE FIELDS.
SUBJECT TO THE TERMS AND
CONDITIONS OF THIS AGREEMENT, SYMYX AGREES TO GRANT, AND HEREBY GRANTS, TO TDCC,
AND TDCC HEREBY ACCEPTS AN EXCLUSIVE (EVEN AS TO SYMYX), WORLDWIDE,
ROYALTY-BEARING LICENSE UNDER SYMYX'S INTEREST IN THE PROGRAM TECHNOLOGY TO
MAKE, HAVE MADE, IMPORT AND USE AGREEMENT COMPOUNDS TO DEVELOP, MAKE, HAVE MADE,
USE, SELL, OFFER FOR SALE, AND IMPORT PRODUCTS WITHIN THE SCOPE OF THE
CORRESPONDING FIELDS.
FOR PURPOSES OF CLARIFICATION, IT IS UNDERSTOOD THAT FOR
SO LONG AS TDCC RETAINS THIS LICENSE, TDCC SHALL HAVE THE NON-EXCLUSIVE RIGHT TO
USE LIBRARY COMPOUNDS AND CONFIDENTIAL INFORMATION RECEIVED FROM SYMYX IN THE
COURSE OF THE RESEARCH PROGRAM, AS WELL AS PROGRAM TECHNOLOGY, TO DEVELOP
AGREEMENT COMPOUNDS BOTH DURING AND AFTER THE PROGRAM TERM AND TO MAKE, HAVE
MADE, IMPORT AND USE SUCH AGREEMENT COMPOUNDS TO DEVELOP, MAKE, HAVE MADE, USE,
SELL, OFFER FOR SALE, AND IMPORT PRODUCTS WITHIN THE SCOPE OF THE CORRESPONDING
FIELDS.
IT IS FURTHER UNDERSTOOD AND AGREED THAT THE LICENSES SET FORTH IN THIS
SECTION 4.1.1 SHALL APPLY ONLY TO THE FIELDS AS SUCH FIELDS EXIST AT THE TIME
ANY PARTICULAR PROGRAM KNOW HOW IS DEVELOPED OR ANY PARTICULAR PROGRAM PATENT IS
CONCEIVED AND REDUCED TO PRACTICE (AS DEFINED IN SECTION 1.30.2). A LICENSE
ARISING WITH RESPECT TO PARTICULAR PROGRAM TECHNOLOGY AS
Confidential
17
APPLICABLE TO THE THEN-EXISTING FIELD SHALL CONTINUE TO APPLY TO SUCH FIELD EVEN
IF THE SCOPE OF THE FIELD IS SUBSEQUENTLY AMENDED SUCH THAT IT NO LONGER
INCLUDES THE FIELD THAT WAS IN PLACE AT THE TIME THE LICENSE INITIALLY AROSE. IT
IS UNDERSTOOD AND AGREED THAT NO LICENSE IS GRANTED TO TDCC UNDER SYMYX PATENTS
OR OTHER PATENTS OWNED OR CONTROLLED BY SYMYX THAT ARE NOT PROGRAM PATENTS,
EXCEPT AS PROVIDED IN SECTION 4.1.2 OR 4.1.3.
4.1.2
*
4.1.3
LIMITED IMMUNITY WITH RESPECT TO SYMYX PATENTS.
*
4.2
SUBLICENSES.
SUBJECT TO THE TERMS AND
CONDITIONS OF THIS AGREEMENT, TDCC SHALL HAVE THE RIGHT TO GRANT SUBLICENSES
UNDER THE RIGHTS GRANTED IN SECTION 4.1 ABOVE TO AFFILIATES OF TDCC AND TDCC
JOINT VENTURES; PROVIDED THAT THE TERMS OF EACH SUCH SUBLICENSE SHALL BE
CONSISTENT WITH THE TERMS OF THIS AGREEMENT. IT IS UNDERSTOOD THAT ANY SUCH
SUBLICENSE SHALL BE SUBJECT AND SUBORDINATE TO THE TERMS AND CONDITIONS OF THIS
AGREEMENT, AND THAT TDCC SHALL REMAIN RESPONSIBLE FOR ALL APPLICABLE FINANCIAL
AND OTHER OBLIGATIONS UNDER THIS AGREEMENT