8Intellectual Property. (a) The Company owns or possesses or reasonably believes it can acquire on commercially reasonable terms sufficient legal rights to all Company Intellectual Property without any known conflict with, or infringement or misappropriation of, the rights of others, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past. The Company has not received any communications alleging that the Company has violated, or by conducting its business, would violate any of the patents, trademarks, service marks, tradenames, copyrights, trade secrets, mask works or other proprietary rights or processes of any other Person. (b) To the Company’s knowledge, no product or service marketed or sold (or proposed to be marketed or sold) by the Company violates or will violate any license or infringes or will infringe any intellectual property rights of any other party. The Company has not received any written communications alleging that the Company has violated or, by conducting its business, would violate, any intellectual property rights of any other party. (c) Other than with respect to commercially available software products under standard end-user object code license agreements, there are no outstanding options, licenses, agreements, claims, encumbrances or shared ownership interests of any kind relating to the Company Intellectual Property, nor is the Company bound by or a party to any options, licenses or agreements of any kind with respect to the patents, trademarks, service marks, trade names, copyrights, trade secrets, licenses, information, proprietary rights and processes of any other Person. (d) The Company has obtained and possesses valid licenses to use all of the software programs present on the computers and other software-enabled electronic devices that it owns or leases or that it has otherwise provided to its employees for their use in connection with the Company’s business. (e) Each employee and consultant has assigned to the Company all intellectual property rights he or she owns that are related to the Company’s business as now conducted and as presently proposed to be conducted and all intellectual property rights that he, she or it solely or jointly conceived, reduced to practice, developed or made during the period of his, her or its employment or consulting relationship with the Company that (i) relate, at the time of conception, reduction to practice, development, or making of such intellectual property right, to the Company’s business as then conducted or as then proposed to be conducted, (ii) were developed on any amount of the Company’s time or with the use of any of the Company’s equipment, supplies, facilities or information or (iii) resulted from the performance of services for the Company. To the Company’s knowledge, it will not be necessary to use any inventions of any of its employees or consultants (or Persons it currently intends to hire) made prior to their employment by the Company, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past. (f) Section 2.8(f) of the Disclosure Schedule lists all patents, patent applications, trademarks, trademark applications, service marks, service xxxx applications, tradenames, copyrights, and licenses to and under any of the foregoing, in each case owned by the Company. (g) The Company has not embedded, used or distributed any open source, copyleft or community source code (including but not limited to any libraries or code, software, technologies or other materials that are licensed or distributed under any General Public License, Lesser General Public License or similar license arrangement or other distribution model described by the Open Source Initiative at xxx.xxxxxxxxxx.xxx, collectively “Open Source Software”) in connection with any of its products or services that are generally available or in development in any manner that would materially restrict the ability of the Company to protect its proprietary interests in any such product or service or in any manner that requires, or purports to require (i) any Company Intellectual Property (other than the Open Source Software itself) be disclosed or distributed in source code form or be licensed for the purpose of making derivative works; (ii) any restriction on the consideration to be charged for the distribution of any Company Intellectual Property; (iii) the creation of any obligation for the Company with respect to Company Intellectual Property owned by the Company, or the grant to any third party of any rights or immunities under Company Intellectual Property owned by the Company; or (iv) any other limitation, restriction or condition on the right of the Company with respect to its use or distribution of any Company Intellectual Property. (h) No government funding, facilities of a university, college, other educational institution or research center, or funding from third parties was used in the development of any Company Intellectual Property. No Person who was involved in, or who contributed to, the creation or development of any Company Intellectual Property, has performed services for the government, university, college, or other educational institution or research center in a manner that would affect Company’s rights in the Company Intellectual Property. (i) To the Company’s knowledge, no other Person is infringing, misappropriating, or otherwise violating any of the Company Intellectual Property.
Appears in 1 contract
8Intellectual Property. (a) The Company owns or possesses or reasonably believes it can acquire on commercially reasonable terms sufficient legal rights to Schedule 5.8(a) sets forth, as of the date of this Agreement, a list of all Company registered Intellectual Property without any known conflict withthat is part of the Product Technology (the “Assigned Registered Intellectual Property”), including for each such item, as applicable: (i) the registration or application number for each item of Assigned Registered Intellectual Property; (ii) the owner of record; (iii) the registration date, as applicable; and (iv) the jurisdiction in which each such item of Assigned Registered Intellectual Property has been issued or registered. With respect to each item of the Assigned Registered Intellectual Property required to be disclosed in Schedule 5.8(a), except as set forth on Schedule 5.8(a), (x) such item is subsisting and has not been adjudicated to be invalid, infringed or unenforceable, and in full force and effect, (y) such item is in compliance with all formal legal and other requirements and all required actions and necessary fees due and documents and recordations with the relevant Governmental Entity in connection therewith have been paid and filed for the purposes of prosecuting, perfecting and maintaining such item. There are no unregistered Patent Rights (including invention disclosures, certificates of invention and applications for certificates of invention), social media handles, domain names and social media accounts, or infringement or misappropriation of, the rights of others, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past. The Company has not received any communications alleging Marks that the Company has violated, or by conducting its business, would violate any are part of the patents, trademarks, service marks, tradenames, copyrights, trade secrets, mask works or other proprietary rights or processes of any other PersonProduct Technology.
(b) To No item of Assigned Registered Intellectual Property is subject to any opposition, cancellation, interference, reissue, reexamination, Inter Partes Review or similar proceedings or the Company’s knowledge, no product or service marketed or sold (or proposed to be marketed or sold) by the Company violates or will violate any license or infringes or will infringe any intellectual property rights subject of any other party. The Company has not received any written communications alleging that outstanding order, judgment or decree imposing restrictions on the Company has violated orownership, by conducting its businessvalidity, would violate, any intellectual property rights or enforceability of any other partysuch Assigned Registered Intellectual Property.
(c) Other than with respect Seller and its Affiliates own all rights, title and interest in and to commercially available software products under standard end-user object code license agreements, there are no outstanding options, licenses, agreements, claims, encumbrances or shared ownership interests such Intellectual Property that is part of any kind relating to the Company Product Technology (“Assigned Intellectual Property”), nor is the Company bound by or a party to any options, licenses or agreements free and clear of any kind with respect to the patents, trademarks, service marks, trade names, copyrights, trade secrets, licenses, information, proprietary rights and processes of any Encumbrances other Personthan Permitted Encumbrances.
(d) The Company has obtained and possesses valid licenses to use all As of the software programs present on the computers and date hereof, there is no material judicial, administrative or arbitral action, suit, hearing, inquiry, investigation or other software-enabled electronic devices that it owns proceeding (public or leases private) against Seller, any of its Affiliates, or, to Seller’s Knowledge, any Third Parties with whom Seller has contracted to supply to Seller goods or that it has otherwise provided to its employees for their use in connection with the Company’s business.
(e) Each employee and consultant has assigned to the Company all intellectual property rights he or she owns services that are materially related to the Company’s business as now conducted Products, before any Governmental Entity alleging that the conduct of the manufacture and as presently proposed to be conducted and all intellectual property sale of the Products in the Territory constitutes infringement, misappropriation or other violation of any Intellectual Property rights that he, she or it solely or jointly conceived, reduced to practice, developed or made during of any third party. As of the period of his, her or its employment or consulting relationship with the Company that date hereof: (i) relatenone of Seller or its Affiliates has received any written notice that remains unresolved from any third party challenging the validity, at the time of conception, reduction to practice, development, enforceability or making of such intellectual property right, to the Company’s business as then conducted or as then proposed to be conducted, (ii) were developed on any amount of the Company’s time or with the use ownership of any of the Company’s equipment, supplies, facilities or information or (iii) resulted from the performance of services for the Company. To the Company’s knowledge, it will not be necessary to use any inventions of any of its employees or consultants (or Persons it currently intends to hire) made prior to their employment by the Company, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past.
(f) Section 2.8(f) of the Disclosure Schedule lists all patents, patent applications, trademarks, trademark applications, service marks, service xxxx applications, tradenames, copyrights, material Assigned Intellectual Property; and licenses to and under any of the foregoing, in each case owned by the Company.
(g) The Company has not embedded, used or distributed any open source, copyleft or community source code (including but not limited to any libraries or code, software, technologies or other materials that are licensed or distributed under any General Public License, Lesser General Public License or similar license arrangement or other distribution model described by the Open Source Initiative at xxx.xxxxxxxxxx.xxx, collectively “Open Source Software”) in connection with any of its products or services that are generally available or in development in any manner that would materially restrict the ability of the Company to protect its proprietary interests in any such product or service or in any manner that requires, or purports to require (i) any Company Intellectual Property (other than the Open Source Software itself) be disclosed or distributed in source code form or be licensed for the purpose of making derivative works; (ii) any restriction on the consideration to be charged for the distribution of any Company Intellectual Property; (iii) the creation of any obligation for the Company with respect to Company Intellectual Property owned by the Company, or the grant to any no third party of any rights or immunities under Company Intellectual Property owned by the Company; or (iv) any other limitation, restriction or condition on the right of the Company with respect to its use or distribution of any Company Intellectual Property.
(h) No government funding, facilities of a university, college, other educational institution or research center, or funding from third parties was used in the development of any Company Intellectual Property. No Person who was involved in, or who contributed to, the creation or development of any Company Intellectual Property, has performed services for the government, university, college, or other educational institution or research center in a manner that would affect Company’s rights in the Company Intellectual Property.
(i) To the Company’s knowledge, no other Person is infringing, misappropriating, misappropriating or otherwise violating any of the Company material Assigned Intellectual Property. No academic institution or Governmental Entity has any right, title or interest (including any “march in” or co-ownership rights) in or to any Assigned Intellectual Property.
(e) All listed inventors in the patents included in the Assigned Intellectual Property are the sole inventors of such patents and inventions disclosed therein, including as the term “inventor” is defined and interpreted under United States patent law or patent laws of other relevant jurisdictions, and all inventors of any inventions claimed or covered by any patent included in the Assigned Intellectual Property have each assigned or are under an obligation to assign such Person’s entire right, title and interest in and to any and all Intellectual Property to Sellers or its Affiliate(s), or, if Sellers or its Affiliate(s) acquired any such patents or other Intellectual Property, then to the Person who employed or otherwise engaged such inventor, and such Person has assigned the same to Sellers or its Affiliate(s). No claims have been asserted challenging the inventorship of any of the patents included in the Assigned Intellectual Property.
(f) The Assigned Intellectual Property includes all Intellectual Property that Seller or any of its Affiliates own or purport to own that is material to the development, manufacturing, registration, commercialization or other exploitation of the Products and the Equipment. To the extent Seller or any of its Affiliates are party to a contract pursuant to which they have obtained any Intellectual Property rights from Third Parties that are necessary for the development, registration, commercialization or other exploitation of the Products and the Equipment, such contract shall be considered a Purchased Contract.
(g) Notwithstanding anything to the contrary, Buyer acknowledges and agrees that the only representations and warranties given in relation to matters relating to the Intellectual Property rights specifically addressed in this Section 5.8 are those set out in this Section 5.8, and no other representation or warranty is given in relation to such matters.
Appears in 1 contract
Samples: Asset Purchase Agreement (Insys Therapeutics, Inc.)
8Intellectual Property. (a) The Company Schedule 4.8(a) sets forth a correct and complete list of the following, in each case that Seller owns or purports to own: (i) Registered Intellectual Property Rights; (ii) unregistered Trademarks; (iii) domain name registrations; and (iv) material unregistered Copyrights (collectively, “Product Intellectual Property”), and in each case setting forth, for each item: the title; full legal name of the owner(s) of record; jurisdiction in which such item has been issued or registered or filed or applied for; status; registration number, serial number, or application number; and date of application, registration, or issuance, as applicable. Seller solely owns, and possesses or reasonably believes it can acquire on commercially reasonable terms sufficient legal rights all rights, titles and interests in and to all Company Purchased Intellectual Property without any known conflict withProperty, or infringement or misappropriation free and clear of all Encumbrances. Immediately after the Closing, Purchaser will be the sole owner of, and will have valid title to, and will have the rights of othersfull right to use, including prior employees or consultantslicense, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past. The Company has not received any communications alleging that the Company has violatedand transfer, or by conducting its business, would violate any all of the patents, trademarks, service marks, tradenames, copyrights, trade secrets, mask works or other proprietary rights or processes of any other PersonPurchased Intellectual Property.
(b) To All of the Company’s knowledgePurchased Intellectual Property is valid, subsisting, enforceable and in full force and effect. Seller has taken all steps to maintain its right, title and interest in and to all Purchased Intellectual Property as required, including paying any and all renewal and maintenance fees, annuities or other fees to any Governmental Authority or other organization. Any and all filings, submissions and responses to any Governmental Authority or other organization necessary to maintain the Purchased Intellectual Property have been timely made with such Governmental Authority or organization. Other than as set forth on Schedule 4.8(b), no product payments are owed, and no filings, submissions, or service marketed responses must be made, during the period of ninety (90) days following the Closing Date for any Product Intellectual Property. No loss, challenge or sold (or proposed to be marketed or sold) by the Company violates or will violate any license or infringes or will infringe any intellectual property rights expiration of any other party. The Company has not received Purchased Intellectual Property is pending or threatened as of the Closing Date, nor to the Seller’s knowledge is there a reasonable basis for any written communications alleging that the Company has violated orsuch loss, by conducting its business, would violate, any intellectual property rights of any other partychallenge or expiration.
(c) Schedule 4.8(c)(i) sets forth a correct and complete list of the following, in each case that are licensed to or used by, but not owned by Seller: (i) Registered Intellectual Property Rights; (ii) unregistered Trademarks; and (iii) material unregistered Copyrights (“Third-Party Intellectual Property”). Seller has a valid and enforceable license to all of the Third-Party Intellectual Property as necessary in connection with the development, design, making, use, offer, sale, service, importation, or exportation of any Products pursuant to the Contracts set forth on Schedule 4.8(c)(ii) (“Licenses”). All Licenses will be fully transferred to Purchaser, and such transfer of Licenses will be valid and effective (with any and all approvals and consents necessary for such transfer having been obtained by Seller in the necessary form and provided to Purchaser), and neither this Agreement nor the Closing will in any way terminate, give another Person the right to terminate, modify the terms of a License, or otherwise affect any right of Purchaser under such transferred Licenses to use, utilize, or exploit any Third-Party Intellectual Property licensed thereunder. Each party to a License is and has been in compliance with, and has not breached or defaulted under, any of such License. No License is subject to termination or has been threatened to be terminated. Seller does not owe any royalties, fees, honoraria, or other payment to any Person by reason of the ownership, development, modification, use, license, sublicense, sale, distribution or other disposition of Products or Intellectual Property Rights, other than fees set forth in Licenses.
(d) Other than Purchased Intellectual Property and Third-Party Intellectual Property, Seller has not used, utilized, or exploited any Intellectual Property Rights in connection with any Product. The Purchased Intellectual Property and the Third-Party Intellectual Property constitute all of the Intellectual Property Rights necessary for any use, manufacturing, development, selling, offering for sale, importation, exportation, marketing, or exploitation of any Product.
(e) Seller has not licensed, agreed to license or granted any other rights in or to any Purchased Intellectual Property or Third-Party Intellectual Property to any Person except as listed on Schedule 4.9(vii).
(f) As of the date hereof, no Product, no use, manufacture, development, sale, offer for sale, importation, exportation, marketing, or exploitation of any Product, and no Purchased Intellectual Property (i) infringes, misappropriates, dilutes, or otherwise violates any Intellectual Property Right of any third party and there is no valid basis for any such claim, (ii) Seller has not received notice of any allegation of any such infringement, misappropriation, or violation, (iii) no investigation is pending or threatened with respect to commercially available software products under standard end-user object code license agreementsany possible infringement, misappropriation, dilution, or other violation of any Intellectual Property Right of any third party, and (iv) Seller has not requested or received any opinions of counsel related to any of the foregoing.
(g) As of the date hereof, no Person is, or has been, infringing, misappropriating, diluting, or otherwise violating any Purchased Intellectual Property. Seller has not given notice to any third party, and no Proceeding has been initiated, threatened, or is pending against any third party, asserting any infringement, misappropriation, dilution, or violation of any Purchased Intellectual Property. Seller is not subject to any claim by any other Person seeking indemnification, defense or otherwise to be held harmless, and has not agreed to indemnify, defend or otherwise hold harmless any other Person, with respect to any Purchased Intellectual Property.
(h) As of the date hereof, other than applications for Patents, Copyrights, Trademarks or other Intellectual Property Rights listed on Schedule 4.8(a), (i) there are no outstanding optionsProceedings before any Governmental Authority (including before the United States Patent and Trademark Office or Copyright Office) in any jurisdiction related to any of the Purchased Intellectual Property, licensesand (ii) to Seller’s knowledge, agreementsno Proceeding has been initiated, claimsthreatened, encumbrances or shared is pending against Seller, and no notice by any Person has been received by Seller, that challenges the validity, enforceability or use of, or any ownership interests or right of Seller regarding, any kind relating to the Company Purchased Intellectual Property, nor is the Company bound by or there a party to reasonable basis for any options, licenses or agreements of any kind with respect to the patents, trademarks, service marks, trade names, copyrights, trade secrets, licenses, information, proprietary rights and processes of any other Personsuch Proceeding.
(d) The Company has obtained and possesses valid licenses to use all of the software programs present on the computers and other software-enabled electronic devices that it owns or leases or that it has otherwise provided to its employees for their use in connection with the Company’s business.
(ei) Each current and former employee and consultant has assigned to contractor of Seller involved in the Company all intellectual property rights he or she owns that are related to the Company’s business as now conducted and as presently proposed to be conducted and all intellectual property rights that heinvention, she or it solely or jointly conceiveddevelopment, reduced to practice, developed or made during the period of his, her or its employment or consulting relationship with the Company that (i) relate, at the time of conceptioncreation, reduction to practice, developmentor discovery of any Purchased Intellectual Property has signed and executed a valid and enforceable assignment irrevocably transferring all rights, title, and interest of such employee or contractor in or to such Purchased Intellectual Property to Seller. Seller has made commercially reasonable efforts to ensure each current and former employee and contractor of Seller who has assigned Intellectual Property Rights in Purchased Intellectual Property has also agreed to undertake in the future all steps necessary to assign all ownership and other rights in any Purchased Intellectual Property. Seller has taken commercially reasonable measures to preserve and maintain the confidentiality of all Trade Secrets and other information of Seller included in the Purchased Assets that is confidential, secret, or making subject to any disclosure limitation. Seller has taken commercially reasonable measures to preserve and maintain the confidentiality of such intellectual property right, to all Trade Secrets and other confidential information of any other Person in the Company’s business as then conducted or as then proposed to be conducted, (ii) were developed on any amount possession and control of the Company’s time or Seller in connection with the use Products, including in compliance with all confidentiality, non-disclosure, and similar Contracts, duties, and obligations of Seller related thereto. All Persons that have received Trade Secrets and other information of Seller included in the Purchased Assets that is confidential, secret, or subject to any of disclosure limitation have first entered into a written Contract with Seller to preserve and maintain the Company’s equipmentconfidentiality thereof, supplies, facilities and no Person has defaulted under or information or (iii) resulted from the performance of services for the Companybreached any such Contract. To the CompanySeller’s knowledge, it will not be necessary to use no current or former employee or contractor has any inventions patents issued or applications pending for any device, process, design, or invention of any kind now used or needed by Seller in furtherance of its employees the Business or consultants (the Products, which patents or Persons it currently intends to hire) made prior to their employment by applications are not part of the Company, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past.Purchased Intellectual Property.
(fa) Section 2.8(fSchedule 4.8(j) sets forth a complete, true and correct list of the Disclosure Schedule lists all patents, patent applications, trademarks, trademark applications, service marks, service xxxx applications, tradenames, copyrights, and licenses to and under any of the foregoing, in each case owned by the Company.
(g) The Company has not embedded, used or distributed any open source, copyleft or community source code (including but not limited to any libraries or code, software, technologies software or other materials that are downloadable, licensed and/or distributed as “free software” (as defined by the Free Software Foundation) or “open source software” (meaning software distributed under any General Public License, Lesser General Public License or similar license arrangement or other distribution model described approved by the Open Source Initiative as set forth at xxx.xxxxxxxxxx.xxx) and/or conditioned on acceptance of a Contract such as the GNU General Public License, collectively GNU Lesser General Public License, GNU Affero General Public License, BSD License, MIT License, Common Public License or under a similar licensing or distribution model (“Open Source SoftwareSource”) that is incorporated into, integrated or bundled with, or otherwise used or distributed in connection or with any Purchased Intellectual Property, identification of its products the applicable Open Source license and a description of the manner in which such Open Source has been used, modified, linked or services that are generally available distributed in, to or with Purchased Intellectual Property. The Company is in development compliance with each license listed in Schedule 4.8(j). No Open Source, public source or freeware software, code or other technology, or any modification or derivative thereof, was or is incorporated into, integrated or bundled with, or otherwise used or distributed in or with the Purchased Intellectual Property in any manner or under any terms that would materially restrict the ability of obligate the Company to protect its proprietary interests in any such product or service or in any manner that requires, or purports to require to: (i) any Company Intellectual Property (other than the Open Source Software itself) be disclosed make available, offer, deliver, disclose or distributed distribute software in source code form or be licensed form; (ii) license software for the purpose of making derivative works; (ii) any restriction on the consideration to be charged for the distribution of any Company Intellectual Property; or (iii) the creation otherwise distribute or license without charge to any Person any portion of any obligation for the Company with respect to Company Intellectual Property owned by the Company, or the grant to any third party of any rights or immunities under Company Intellectual Property owned by the Company; or (iv) any other limitation, restriction or condition on the right of the Company with respect to its use or distribution of any Company Purchased Intellectual Property.
(h) No government funding, facilities of a university, college, other educational institution or research center, or funding from third parties was used in the development of any Company Intellectual Property. No Person who was involved in, or who contributed to, the creation or development of any Company Intellectual Property, has performed services for the government, university, college, or other educational institution or research center in a manner that would affect Company’s rights in the Company Intellectual Property.
(i) To the Company’s knowledge, no other Person is infringing, misappropriating, or otherwise violating any of the Company Intellectual Property.
Appears in 1 contract
Samples: Asset Purchase Agreement (Merit Medical Systems Inc)
8Intellectual Property. (a) The Company owns has furnished to the Buying Parties a complete and accurate list of all material “Intellectual Property” (as that term is defined on Annex I to this Agreement), which is owned, licensed, leased or possesses otherwise used by the Company in connection with the Business.
(b) the Company has furnished to the Buying Parties a complete and accurate list of all material agreements to which the Company is a party or reasonably believes it can acquire on commercially reasonable terms sufficient legal otherwise bound (i) granting or obtaining any right to use or practice any rights to all Company under any Intellectual Property without any known conflict with, or infringement or misappropriation of, (ii) restricting the rights of othersthe Company to use any Intellectual Property, including prior employees license agreements, development agreements, distribution agreements, settlement agreements, consent to use agreements, and covenants not to xxx (collectively, the “License Agreements”). The License Agreements are valid and binding obligations of all parties thereto, enforceable in accordance with their terms, and, to the Knowledge of the Company, there exists no event or consultantscondition which will result in a violation or breach of, or academic constitute (with or medical institutions with which without due notice or lapse of time or both) a default by any of them may party under any such License Agreement other than as would not reasonably be affiliated now or may expected to have been affiliated in a Material Adverse Effect on the pastCompany. The Company has not received licensed or sublicensed its rights in any communications Intellectual Property other than pursuant to the License Agreements.
(c) Except as set forth on Company Disclosure Schedule 3.8 or as would not reasonably be expected to have a Material Adverse Effect on the Company:
(i) To the Knowledge of the Company, the Company or its Affiliates own, or have a valid right to use, free and clear of all encumbrances, all of the Intellectual Property. To the Knowledge of the Company, the Company is listed in the records of the appropriate United States, state, or foreign registry as the sole current owner of record for each application and registration relating to Intellectual Property owned by the Company that has been filed or issued with respect to such Intellectual Property.
(ii) To the Knowledge of the Company, The Intellectual Property owned by the Company, and any Intellectual Property used by the Company, is subsisting, in full force and effect, has not been cancelled, expired, or abandoned, and is valid and enforceable.
(iii) There is no pending or, to the Knowledge of the Company threatened, claim, suit, arbitration or other adversarial legal proceeding before any court, agency, arbitral tribunal, or registration authority in any jurisdiction (A) involving the Intellectual Property owned by the Company, or, to the Knowledge of the Company, the Intellectual Property licensed to the Company, (B) alleging that the Company has violatedactivities or the conduct of the Business do, or by conducting its businesswill, would infringe upon, violate any or constitute the unauthorized use of the patents, trademarks, service marks, tradenames, copyrights, trade secrets, mask works or other proprietary rights or processes of any other Person.
(b) To the Company’s knowledge, no product or service marketed or sold (or proposed to be marketed or sold) by the Company violates or will violate any license or infringes or will infringe any intellectual property rights of any other party. The Company has not received any written communications alleging that third party or (C) challenging the Company has violated orownership, by conducting its businessuse, would violatevalidity, any intellectual property rights enforceability or registrability of any other party.
(c) Other than with respect to commercially available software products under standard end-user object code license agreements, there are no outstanding options, licenses, agreements, claims, encumbrances or shared ownership interests of any kind relating to the Company Intellectual Property, nor is the Company bound by or a party to any options, licenses or agreements of any kind with respect to the patents, trademarks, service marks, trade names, copyrights, trade secrets, licenses, information, proprietary rights and processes of any other Person.
(d) The Company has obtained and possesses valid licenses to use all of the software programs present on the computers and other software-enabled electronic devices that it owns or leases or that it has otherwise provided to its employees for their use in connection with the Company’s business.
(e) Each employee and consultant has assigned to the Company all intellectual property rights he or she owns that are related to the Company’s business as now conducted and as presently proposed to be conducted and all intellectual property rights that he, she or it solely or jointly conceived, reduced to practice, developed or made during the period of his, her or its employment or consulting relationship with the Company that (i) relate, at the time of conception, reduction to practice, development, or making of such intellectual property right, to the Company’s business as then conducted or as then proposed to be conducted, (ii) were developed on any amount of the Company’s time or with the use of any of the Company’s equipment, supplies, facilities or information or (iii) resulted from the performance of services for the Company. To the Company’s knowledge, it will not be necessary to use any inventions of any of its employees or consultants (or Persons it currently intends to hire) made prior to their employment by the Company, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past.
(f) Section 2.8(f) of the Disclosure Schedule lists all patents, patent applications, trademarks, trademark applications, service marks, service xxxx applications, tradenames, copyrights, and licenses to and under any of the foregoing, in each case Property owned by the Company.
(giv) The Company has not embedded, used or distributed any open source, copyleft or community source code (including but not limited to any libraries or code, software, technologies or other materials that are licensed or distributed under any General Public License, Lesser General Public License or similar license arrangement or other distribution model described by To the Open Source Initiative at xxx.xxxxxxxxxx.xxx, collectively “Open Source Software”) in connection with any of its products or services that are generally available or in development in any manner that would materially restrict the ability Knowledge of the Company Company, the conduct of the Business does not infringe upon (either directly or indirectly such as through contributory infringement or inducement to protect its proprietary interests in infringe) any such product intellectual property rights owned or service or in controlled by any manner that requiresthird party. To the Knowledge of the Company, no third party is misappropriating, infringing, or purports to require (i) violating any Company Intellectual Property (other than the Open Source Software itself) be disclosed or distributed in source code form or be licensed for the purpose of making derivative works; (ii) any restriction on the consideration to be charged for the distribution of any Company Intellectual Property; (iii) the creation of any obligation for the Company with respect to Company Intellectual Property owned or used by the Company, and no such claims, suits, arbitration or other adversarial proceedings which have been brought against any third party by the grant Company remain unresolved.
(v) The Company have used reasonable commercial efforts to protect the confidentiality of its trade secrets. To the Knowledge of the Company, no trade secrets have been disclosed or authorized to be disclosed to any third party other than pursuant to a non-disclosure agreement. To the Knowledge of the Company, no party to any non-disclosure agreement relating to its trade secrets is in breach or default thereof.
(vi) The consummation of the Agreement and the transactions contemplated hereby will not result in the loss or impairment of the Company’s right to own or use any of the Intellectual Property, nor will it require the consent of any rights governmental or immunities under Company Intellectual Property owned by the Company; regulatory authority or (iv) any other limitation, restriction or condition on the right of the Company with third party in respect to its use or distribution of any Company such Intellectual Property.
(h) No government funding, facilities of a university, college, other educational institution or research center, or funding from third parties was used in the development of any Company Intellectual Property. No Person who was involved in, or who contributed to, the creation or development of any Company Intellectual Property, has performed services for the government, university, college, or other educational institution or research center in a manner that would affect Company’s rights in the Company Intellectual Property.
(i) To the Company’s knowledge, no other Person is infringing, misappropriating, or otherwise violating any of the Company Intellectual Property.
Appears in 1 contract
Samples: Securities Exchange Agreement
8Intellectual Property. (a) The Company owns or possesses or reasonably believes it can acquire on commercially reasonable terms sufficient legal rights to Seller Entities exclusively own, free and clear of all Company Encumbrances, other than Permitted Encumbrances, all Seller Intellectual Property without any known conflict with, or infringement or misappropriation of, the rights of others, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past. The Company has not received any communications alleging that the Company has violated, or by conducting its business, would violate any of the patents, trademarks, service marks, tradenames, copyrights, trade secrets, mask works or other proprietary rights or processes of any other PersonProperty.
(b) To the Company’s knowledgeAll Seller Registered Intellectual Property Rights and all Licensed Registered Intellectual Property Rights (defined below) are valid, no product or service marketed or sold (or proposed to be marketed or sold) by the Company violates or will violate any license or infringes or will infringe any intellectual property rights of any other party. The Company has not received any written communications alleging that the Company has violated orsubsisting, by conducting its business, would violate, any intellectual property rights of any other partyand enforceable.
(c) Other than with respect to commercially available software products under standard end-user object code license agreementsNeither the operation of the Business as currently conducted by, there are no outstanding optionsor at the direction of, licensesthe Seller Entities nor any of the Products is infringing upon, agreementsmisappropriating, claims, encumbrances or shared ownership interests of otherwise violating any kind relating to the Company Intellectual Property, nor is the Company bound by or a party to any options, licenses or agreements of any kind with respect to the patents, trademarks, service marks, trade names, copyrights, trade secrets, licenses, information, proprietary rights and processes Property Rights of any other Person.
(d) The Company Schedule 5.8(d) sets forth a complete and accurate list of all (i) Seller Registered Intellectual Property Rights, (ii) all Registered Intellectual Property Rights included among the Licensed Intellectual Property Rights exclusively licensed to any of the Seller Entities (the “Licensed Registered Intellectual Property Rights”), and (iii) all material unregistered Trademarks and domain names included among the Seller Intellectual Property. Seller has obtained not received written notice of any action, claim or other legal proceeding, and possesses valid licenses no action, claim or other legal proceeding is pending or, to the Seller’s knowledge, threatened, which challenges the validity, enforceability, ownership of or any Seller Entities’ right to use all or license any such Registered Intellectual Property Rights. All registrations and applications for the Seller Registered Intellectual Property Rights and, to Seller’s knowledge, the Licensed Registered Intellectual Property Rights are duly registered or filed in the name of the software programs present on applicable Seller Entity assigning such Intellectual Property Rights to Purchaser as required herein (or, with respect to such Licensed Registered Intellectual Property Rights, in the computers name of the applicable Person granting such license to such Seller Entity or such Person’s upstream licensor). All Patents included among the Seller Registered Intellectual Property Rights and, to Seller’s knowledge, all Patents included among the Licensed Registered Intellectual Property Rights are, in each case, being diligently prosecuted in the respective patent offices in accordance with applicable Legal Requirements and to the Seller’s knowledge no material prior art or other software-enabled electronic devices that it owns facts are likely to render any claims in such Patents unpatentable, invalid or leases or that it has otherwise provided unenforceable. All renewable and maintenance fees due as of the Closing with respect to its employees for their use in connection with the Companyprosecution and maintenance of the Patents included among the Seller Registered Intellectual Property Rights and, to Seller’s businessknowledge, the Licensed Registered Intellectual Property Rights, have been paid.
(e) Each employee and consultant has assigned to the Company The Patents listed on Schedule 5.8(d)(i) constitute all intellectual property rights he or she owns that are related to the Company’s business as now conducted and as presently proposed to be conducted and all intellectual property rights that he, she or it solely or jointly conceived, reduced to practice, developed or made during the period of his, her or its employment or consulting relationship with the Company that (i) relate, at the time of conception, reduction to practice, development, or making of such intellectual property right, to the Company’s business as then conducted or as then proposed to be conducted, (ii) were developed on any amount of the Company’s time or with the use of Patents owned by any of the Company’s equipmentSeller Entities that are used or held for use in the operation of, suppliesor otherwise related to, facilities the Business or information or (iii) resulted from that cover any of the performance of services Products. Except for the Company. To Patents included among the Company’s knowledgeLicensed Intellectual Property Rights licensed or sublicensed to the Seller Entities pursuant to an Assigned Contract that is being assigned to Purchaser as contemplated herein, it will not be necessary no Seller Entity holds a license or other right to use any inventions of Patents that are used or held for use in the operation of, or otherwise related to, the Business, or that cover any of its employees or consultants (or Persons it currently intends to hire) made prior to their employment by the Company, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the pastProducts.
(f) Section 2.8(f) The Seller Entities have a valid and enforceable written license to practice all of the Disclosure Schedule lists all patentsLicensed Intellectual Property Rights. All Intellectual Property Rights licensed to the Seller Entities pursuant to an Assigned Contract that are being assigned to Purchaser as contemplated herein, patent applications, trademarks, trademark applications, service marks, service xxxx applications, tradenames, copyrights, and licenses to and under any of together with the foregoing, in each case Seller Intellectual Property owned by the CompanySeller Entities, constitutes all of the Intellectual Property Rights used or otherwise necessary to operate the Business in the manner in which it is currently conducted. No Seller Entity is, and has not in the last three (3) years been, in breach of any the Material License Agreements in any material respect.
(g) The Company has not embeddedTo Seller’s knowledge, used or distributed any open source, copyleft or community source code (including but not limited to any libraries or code, software, technologies or other materials that are licensed or distributed under any General Public License, Lesser General Public License or similar license arrangement or other distribution model described neither the operation of the Business by the Open Source Initiative at xxx.xxxxxxxxxx.xxxSeller Entities, collectively “Open Source Software”) in connection with nor any of its products the Products have in the past six (6) years infringed upon, misappropriated, or services that are generally available or in development in otherwise violated any manner that would materially restrict the ability Intellectual Property Rights of any other Person. To Seller’s knowledge, as of the Company date hereof, no Person is infringing upon, misappropriating or otherwise violating any Seller Intellectual Property or any of the Licensed Registered Intellectual Property Rights.
(h) The Seller Entities have taken commercially reasonable measures to protect its proprietary interests and maintain the confidentiality of the material Trade Secrets and Know-How included in any such product or service or in any manner that requiresthe Seller Intellectual Property. Without limiting the foregoing, or purports to require the Seller Entities have not (i) disclosed any Company Trade Secrets and Know-How included among the Seller Intellectual Property (other than the Open Source Software itself) be disclosed or distributed in source code form or be licensed for the purpose that is not bound by appropriate obligations of making derivative works; confidentiality nor (ii) licensed any restriction on Patents included among the consideration Seller Intellectual Property other than to be charged for Existing Licensees pursuant to their respective Material License Agreement.
(i) Each Seller Entity has entered into valid and enforceable written agreements with each current and former employee, officer, contractor, or other Person who contributed to the distribution invention, creation, or development of any Company Seller Intellectual Property; (iii) the creation Property for or on behalf of any obligation for of the Company Seller Entities or currently used in the operation of the Business whereby such employee, officer, contractor, or other Person agrees to obligations of confidentiality with respect to Company the Trade Secrets and Know-How of the Seller Entities and assigns to such Seller Entity any ownership interest such employee, officer, contractor, or other Person may have in or to such Intellectual Property owned by Rights. To Seller’s knowledge no current or former officer, director, stockholder or Affiliate of the CompanySeller Entities nor any of their respective officers, directors employees, or the grant contractors, has any right, license, claim, moral right or interest whatsoever in or to any third party of any rights or immunities under Company Intellectual Property owned by the Company; or (iv) any other limitation, restriction or condition on the right of the Company with respect to its use or distribution of any Company Seller Intellectual Property.
(hj) No government fundingNeither the execution, facilities delivery or performance of a university, college, other educational institution or research centerthis Agreement nor the consummation of the transactions contemplated hereby will (i) cause the termination of, or funding from third parties was used give rise to a right of termination of, any Material License Agreements, (ii) result in any of the development of Seller Entities granting to any Company Intellectual Property. No Person who was involved inany right to, or who contributed with respect to, the creation or development of any Company Intellectual Property Right included in Seller Intellectual Property, (iii) impair the right of Seller Entities, or after the Closing, Purchaser, to use or exploit in any way any Intellectual Property Rights or (iv) obligate the Purchaser to pay any royalties or other amounts to any Person that were not payable by a Seller Entity immediately prior to the execution and delivery of this Agreement.
(k) The Seller Entities have taken commercially reasonable actions to protect the security, confidentiality, integrity, and intended accessibility of the Seller Entities’ IT Systems and the confidential data and other information stored or processed thereon, and, to Seller’s knowledge, during the prior three (3) years, there has performed services for the governmentbeen no unauthorized access, universityuse, collegeintrusion, manipulation, corruption, or other educational institution breach of security of the Seller Entities’ IT Systems, that has caused or research center could reasonably be expected to cause material (i) disruption of or interruption in a manner that would affect Company’s rights in or to the Company Intellectual Propertyuse of such IT Systems or (ii) loss, destruction, damage, or harm to the Business.
(l) To Seller’s knowledge, none of the Products, nor the operation of the Business as currently conducted are covered by or infringe upon, any Intellectual Property Rights (i) To identified or referenced as owned, licensed, sublicensed or optioned for license or sublicense by (1) the CompanyUnited States Department of the Navy at The Naval Medical Research Center pursuant to that certain Amended and Restated Development and License Agreement, dated December 24, 2012, as amended, by and between Intellikine LLC (“INK”) and Infinity Pharmaceuticals, Inc. (the “INK Agreement”), (2) The Regents of the University of California pursuant to the INK Agreement or (ii) owned by either of Mundipharma International Corporation limited or Purdue Pharmaceutical products L.P. Seller has provided to Purchaser true and complete copies of the Material License Agreements and the INK Agreement prior to the date of this Agreement. The Infinity Agreement is in full force and effect and has not been materially modified or amended from the form provided to Purchaser as of the date of this Agreement. The INK Agreement is, to Seller’s knowledge, in full force and effect and has not been materially modified or amended from that provided to Purchaser as of the date of this Agreement. Neither Seller nor, to Seller’s knowledge, Infinity nor INK, is in default with respect to any material obligation under the INK Agreement or the Infinity Agreement, as applicable. Seller has not waived or terminated any of its rights under the Infinity Agreement, and to Seller’s knowledge, no other Person is infringingsuch rights under the Infinity Agreement have otherwise lapsed, misappropriatingexpired, or otherwise violating any been terminated in a way that would reasonably be expected to materially restrict or limit the rights acquired by Purchaser or Purchaser’s ability to operate the Business after the Closing in substantially the same manner as operated prior to the Closing.
(m) Each of the Company Intellectual PropertySeller Entities materially complies, and has during the past five (5) years materially complied, with the Privacy and Information Security Requirements.
(n) None of the Seller Entities has received any written notice, complaint, allegation or other communication, and to the Seller’s knowledge, there is no pending investigation by any Governmental Authority, regarding any actual or alleged violation of any Privacy and Information Security Requirement with respect to the Seller Entities’ conduct of the Business.
(o) To Seller’s knowledge, during the prior five (5) years, there has been no data security breach, privacy breach or unauthorized use of any Personal Data that is owned, used, stored, received, or controlled by or on behalf of the Seller Entities in connection with the operation of the Business.
(p) To Seller’s knowledge, during the prior five (5) years, (i) the Seller Entities have not suffered a security breach with respect to any IT System that contains or provides access to Business Data, and (ii) there has been no unauthorized or illegal access to, or use or disclosure of, any Business Data.
(q) During the prior five (5) years, the Seller Entities have not notified, or been required by Privacy and Information Security Requirements to notify, any Person of any unauthorized or illegal access to, or unauthorized or illegal use or disclosure of, Personal Data.
(r) The Seller Entities employ commercially appropriate technical, administrative, physical and organizational measures that materially comply with Privacy and Information Security Requirements to protect Business Data within its custody or control.
(s) To Seller’s knowledge, there are no outstanding, ongoing or unsatisfied requests from individuals seeking to exercise their data protection rights under applicable Privacy and Information Security Requirements (including any rights to access, rectify, or delete their Personal Data, or to restrict processing of or object to processing of Personal Data, or to data portability).
(t) The Seller Entities have filed any required registrations with, or made the required notifications to, the applicable data protection authority or such other Governmental Authority.
Appears in 1 contract
8Intellectual Property. (a) The Company owns Schedule 5.8(a) sets forth, as of the date of this Agreement, a list of all issued or possesses or reasonably believes it can acquire on commercially reasonable terms sufficient legal rights to all Company registered Intellectual Property without any that is reasonably known conflict with, or infringement or misappropriation of, believed by Seller to be part of the rights Product Technology (the “Assigned Intellectual Property”) as of othersthe Closing Date, including prior employees for each such item, as applicable: (i) the registration or consultantsapplication number for each item of Assigned Intellectual Property; (ii) the owner of record; (iii) the registration or issuance date, as applicable; and (iv) the jurisdiction in which each such item of Assigned Intellectual Property has been issued or academic or medical institutions registered. With respect to each item of the Assigned Intellectual Property required to be disclosed in Schedule 5.8(a), to Seller’s Knowledge, (x) such item is subsisting, valid and enforceable and (y) as of the Closing Date, all necessary fees due and documents and recordations with which any of them may be affiliated now or may the relevant Governmental Entity in connection therewith have been affiliated in paid and filed for the past. The Company has not received any communications alleging that the Company has violatedpurposes of prosecuting, or by conducting its business, would violate any of the patents, trademarks, service marks, tradenames, copyrights, trade secrets, mask works or other proprietary rights or processes of any other Personperfecting and maintaining such item.
(b) To the CompanySeller’s knowledgeKnowledge, no product item of Assigned Intellectual Property is subject to any outstanding order, judgment or service marketed decree imposing restrictions on the ownership, validity, or sold (or proposed to be marketed or sold) by the Company violates or will violate any license or infringes or will infringe any intellectual property rights enforceability of any other party. The Company has not received any written communications alleging that the Company has violated or, by conducting its business, would violate, any intellectual property rights of any other partysuch Assigned Intellectual Property.
(c) Other than with respect to commercially available software products under standard end-user object code license agreements, there are no outstanding options, licenses, agreements, claims, encumbrances or shared ownership interests of any kind relating to the Company Seller and its Affiliates own all Assigned Intellectual Property, nor is the Company bound by or a party to any options, licenses or agreements free and clear of any kind with respect to the patents, trademarks, service marks, trade names, copyrights, trade secrets, licenses, information, proprietary rights and processes of any Encumbrances other Personthan Permitted Encumbrances.
(d) The Company has obtained and possesses valid licenses to use all As of the software programs present on date hereof, to Seller’s Knowledge, there is no material judicial, administrative or arbitral action, suit, hearing, inquiry, investigation or other proceeding (public or private) before any Governmental Entity alleging that the computers conduct of the manufacture and sale of the Products in the Territory constitutes infringement, misappropriation or other software-enabled electronic devices that it owns or leases or that it has otherwise provided violation of any material Intellectual Property rights of any third party. Except as disclosed in Schedule 5.8(d), as of the date hereof, to its employees for their use in connection with the CompanySeller’s business.
(e) Each employee and consultant has assigned to the Company all intellectual property rights he or she owns that are related to the Company’s business as now conducted and as presently proposed to be conducted and all intellectual property rights that he, she or it solely or jointly conceived, reduced to practice, developed or made during the period of his, her or its employment or consulting relationship with the Company that Knowledge: (i) relatesince January 1, at 2018 none of Seller or its Affiliates has received any written notice that remains unresolved from any third party challenging the time of conceptionvalidity, reduction to practice, development, enforceability or making of such intellectual property right, to the Company’s business as then conducted or as then proposed to be conducted, (ii) were developed on any amount of the Company’s time or with the use ownership of any of the Company’s equipment, supplies, facilities or information or (iii) resulted from the performance of services for the Company. To the Company’s knowledge, it will not be necessary to use any inventions of any of its employees or consultants (or Persons it currently intends to hire) made prior to their employment by the Company, including prior employees or consultants, or academic or medical institutions with which any of them may be affiliated now or may have been affiliated in the past.
(f) Section 2.8(f) of the Disclosure Schedule lists all patents, patent applications, trademarks, trademark applications, service marks, service xxxx applications, tradenames, copyrights, Assigned Intellectual Property; and licenses to and under any of the foregoing, in each case owned by the Company.
(g) The Company has not embedded, used or distributed any open source, copyleft or community source code (including but not limited to any libraries or code, software, technologies or other materials that are licensed or distributed under any General Public License, Lesser General Public License or similar license arrangement or other distribution model described by the Open Source Initiative at xxx.xxxxxxxxxx.xxx, collectively “Open Source Software”) in connection with any of its products or services that are generally available or in development in any manner that would materially restrict the ability of the Company to protect its proprietary interests in any such product or service or in any manner that requires, or purports to require (i) any Company Intellectual Property (other than the Open Source Software itself) be disclosed or distributed in source code form or be licensed for the purpose of making derivative works; (ii) any restriction on the consideration to be charged for the distribution of any Company Intellectual Property; (iii) the creation of any obligation for the Company with respect to Company Intellectual Property owned by the Company, or the grant to any no third party of any rights or immunities under Company Intellectual Property owned by the Company; or (iv) any other limitation, restriction or condition on the right of the Company with respect to its use or distribution of any Company Intellectual Property.
(h) No government funding, facilities of a university, college, other educational institution or research center, or funding from third parties was used in the development of any Company Intellectual Property. No Person who was involved in, or who contributed to, the creation or development of any Company Intellectual Property, has performed services for the government, university, college, or other educational institution or research center in a manner that would affect Company’s rights in the Company Intellectual Property.
(i) To the Company’s knowledge, no other Person is infringing, misappropriating, misappropriating or otherwise violating any of the Company Assigned Intellectual Property.
(e) Notwithstanding anything to the contrary, Buyer acknowledges and agrees that the only representations and warranties given in relation to matters relating to the Intellectual Property rights specifically addressed in this Section 5.8 are those set out in this Section 5.8, and no other representation or warranty is given in relation to such matters.
Appears in 1 contract
Samples: Asset Purchase Agreement (Insys Therapeutics, Inc.)
