Service Agreement Page 4
exclusive, worldwide, royalty-free, fully paid-up license (with a right to grant sublicenses) under Service Companys right, title and interest in and to the Service Company IP solely to the extent necessary for Technology Company to utilize the Inventions and the other deliverables or results of Services for any purpose. The foregoing license may be sublicensed by Technology Company in connection with the transfer by Technology Company of the ownership of, or any rights in or to, the deliverables, results or Inventions to which the license relates.
4.3 Technology Company Technology. Technology Company hereby grants to Service Company a revocable, nonexclusive, non-transferable, worldwide, royalty-free, fully paid-up, worldwide license (with the right to grant sublicenses) for the term of this Agreement, under all materials, data, processes, documents, information, discoveries, inventions, know-how and the like and all patent, copyright and other intellectual property rights, in each case, owned or controlled by Technology Company solely as necessary to perform the Services.
4.4 No Other License Grant. Except as expressly set forth in this Agreement, nothing in this Agreement, nor the delivery of any information or materials to Service Company by Technology Company (or any third party acting on its behalf) in connection with Service Companys performance of Services under this Agreement shall be deemed to grant to either party any right or license under any patents, patent applications, know-how, technology, inventions or other intellectual property of the other party. Notwithstanding anything in this Agreement to the contrary, Technology Company shall own all right, title and interest in and to all inventions, know-how, information and materials, and all related intellectual property rights, that arise from Technology Companys use of Inventions and the other deliverables and results of Services.
4.5 Third Party Intellectual Property. Service Company will not knowingly utilize in the performance of Services under this Agreement or incorporate into any deliverable or materials or any other results of the Services provided to Technology Company any technology or materials covered by proprietary rights of a third party unless Service Company is freely permitted to utilize or incorporate such technology or materials and Technology Company is freely permitted to use such work, deliverable or materials or any other results of the Services without further compensation by Service Company or Technology Company to any third party.
4.6 Subcontractors and Use of Third Party Facilities. Service Company will ensure that its agreement with any permitted subcontractor includes the assignment of any and all Inventions to (1) Technology Company or (2) Service Company with the right of further transfer to Technology Company; provided, however, that Service Company may (A) grant customary carve outs relating to inventions that are conceived, created, developed or generated in connection with the performance of any subcontracted activities and are solely improvements to the subcontractors background intellectual property rights; or (B) enter into agreements with academic collaborators or non-profit institutions on customary terms (that at a minimum grant to Technology Company, or Service Company with the right of further transfer to Technology Company, (i) a non-exclusive license, and (ii) an exclusive option or exclusive license, in each case ((i) and (ii)) to all inventions conceived, created, developed or generated in connection with the performance of any subcontracted activities). Service Company will not make any use of any funds, space, personnel, facilities, equipment or other resources of a third party in performing Services, or take any other action, that would result in a third party owning or having a right in the results of Services or Inventions, unless agreed upon in writing in advance by Technology Company.
5.1 Term. This Agreement shall become effective on the date hereof and shall remain in force until Service Company, in its sole discretion, terminates the Agreement. The date that Service Company provides written notice of such termination to Technology Company, is referred to as the Termination Date.