Exclusive License Agreement (2015)Full Document 

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EXCLUSIVE LICENSE AGREEMENT FOR TUSCHL II UNITED STATES

PATENTS AND PATENT APPLICATIONS

This Exclusive License Agreement for Tuschl II United States Patents and Patent Applications ("Agreement") is made as of March 14, 2011 ("Effective Date"), by and between Alnylam Pharmaceuticals, Inc. ("Alnylam") and University of Massachusetts ("UMass").

This Agreement is made with respect to the following recitals:

WHEREAS, Max-Planck-Gesellschaft zur Föerderung der Wissenschaften e.V. ("Max-Planck"), is an owner of rights in and to the patents and patent applications defined herein as the US Tuschl II Patent Family;

WHEREAS, pursuant to that certain Assignment Agreement made and entered into as of March 14, 2011, UMass has become a co-owner of the US Tuschl II Patent Family;

WHEREAS, UMass has the right to grant licenses under the US Tuschl II Patent Family;

WHEREAS, Alnylam desires to obtain a license with the right to grant sublicenses under the US Tuschl II Patent Family, and UMass desires to grant such license subject to the conditions set forth herein;

NOW, THEREFORE, Alnylam and UMass hereby agree as follows:

1. Definitions. The following words and phrases shall have the meanings set forth below solely for purposes of this Agreement.

1.1. "Affiliate" shall mean any corporation or other business entity that now or in the future directly or indirectly controls, is controlled by, or is under common control with, a Party or a Third Party (as the case may be under this Agreement). Control means direct or indirect ownership of, or other beneficial interest in, fifty percent (50%) or more of the voting stock, other voting interest, or income of a corporation or other business entity, or possession of the power to elect or appoint fifty percent (50%) or more of the members of the governing body of the corporation or other business entity. A corporation or other business entity shall be an Affiliate only during such period of time that it meets the definition set forth in this Section 1.1.

1.2. "Collaboration Partner" shall mean an entity involved in a bona fide collaboration with Merck or any of Merck’s Affiliates sublicensed in accordance herewith. A bona fide collaboration shall mean a collaboration with Merck or any of its Affiliates sublicensed in accordance herewith, where such collaboration is entered into after Merck’s commencement of GLP toxicology testing of the Licensed Product required for the filing of an Investigational New Drug Application and involves the development of a Licensed Product in the Field, in which Merck plays an integral role in the experimentation and a dominant or co-equal role in the decision-making, relating to the development of such Licensed Product in the Field. Merck’s or any of its properly-sublicensed Affiliates’ experimentation relating to the discovery and development of a Licensed Product in the


Field prior to the commencement of a collaboration shall be deemed to have been conducted in the course of the collaboration for purposes of determining whether the collaboration constitutes a bona fide collaboration.

1.3. "Confidentiality Agreement" shall mean a document in the form attached as Exhibit B hereto.

1.4. "Distributor" shall mean an entity that purchases Licensed Products (whether in packaged form or bulk form) from Merck, one of its Affiliates, or a Collaboration Partner, and resells such Licensed Products to Third Parties in a manner consistent with normal trade practices in the pharmaceutical industry.

1.5. "Excluded Targets" shall mean any Target for which Alnylam has, prior to the Effective Date, granted a Third Party exclusive rights under the US Tuschl II Patent Family, unless such Target has ceased to be an Excluded Target pursuant to Section 2.2 hereof.

1.6. "Field" shall mean all uses other than the commercial sale or use as a research reagent, including in a kit format, for research or educational purposes, including without limitation,

(i) internal and collaborative use;

(ii) all therapeutic and prophylactic uses; and

(iii) diagnostic uses for purposes of therapeutic monitoring, but excluding all other diagnostic uses, specifically including human and veterinary diseases, for all indications.

1.7. "Gatekeeper" shall mean an independent attorney, not employed by Alnylam, registered to practice before the United

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