Common use of Assignment and Prosecution of Project Inventions Clause in Contracts

Assignment and Prosecution of Project Inventions. Where applicable under Section 8.5, the Parties agree to and do hereby assign any and all right, title, and interest in such Project Inventions to the other Party, or to both Parties in the case of Joint Inventions. The Parties agree (and agree to cause their Affiliates), upon request by another Party and at such other Party’s cost and expense, to promptly execute any and all documents deemed necessary or appropriate by the other Party (and/or their Affiliates) to memorialize, effect or perfect the assignments under this Section 8.7 throughout the world. Epizyme and Eisai shall be responsible for the prosecution and maintenance of any Patent applications and Patents claiming or covering any Pharmaceutical Partners Project Invention. RMS shall be responsible for the prosecution and maintenance of any Patent applications and Patents claiming or covering any RMS Project Invention. Each Party will reasonably consider any request by the other Party(ies) to support any patent applications related to Project Inventions owned by the requesting Party. The Parties agree that the Parties set forth below shall be responsible for the prosecution and maintenance of any Joint Inventions (the “Joint Patents”): (a) for any Joint Inventions solely related to Project Inventions in the Pharmaceutical Field, the Parties agree that Pharmaceutical Partners shall be responsible for such Joint Patents; (b) for any Joint Inventions solely related to Project Inventions in the Diagnostic Field, the Parties agree that RMS shall be responsible for such Joint Patents; and (c) for any Joint Inventions that relate to Project Inventions that may have application in both the Pharmaceutical Field and Diagnostic Field, the Parties agree that Pharmaceutical Partners shall be responsible for such Joint Patents. For Joint Patents that Pharmaceutical Partners are responsible for the prosecution and maintenance, RMS shall (and shall cause their Affiliates to) reasonably cooperate with Pharmaceutical Partners in connection with the same, including without limitation, upon the request of Pharmaceutical Partners, (w) promptly executing any and all Patent applications, formal documents, assignments, or other instruments which Pharmaceutical Partners deem necessary or reasonably useful for the filing, prosecution, maintenance, enforcement and/or defense of any Patent applications or Patents claiming or covering any such Joint Inventions, which may be filed or prepared at Pharmaceutical Partners’ cost and expense, and (x) providing copies of or access to such supporting documentation, information, results, and analyses with respect to such Project Invention as is necessary for the filing, prosecution, maintenance, enforcement and/or defense of any Patent applications or Patents claiming or covering any such Joint Inventions. Pharmaceutical Partners shall keep RMS reasonably informed of prosecution activities with respect to the Patent applications for such Joint Patents. Pharmaceutical Partners shall provide RMS with a copy of material communications from any patent authority regarding such Joint Inventions, and shall provide drafts of any material filings or responses to be made to such patent authorities a reasonable amount of time in advance of submitting such filings or responses so that RMS may have an opportunity to review and comment. If Pharmaceutical Partners abandon, cease prosecution or do not maintain any such Joint Patent anywhere in the world, then Pharmaceutical Partners shall provide RMS written notice of at least [**] days prior to any deadline for taking action to avoid abandonment (or other loss of rights) and RMS shall have the right, in RMS’ sole discretion, to file for or continue prosecution and/or maintenance of such Joint Patent at its own expense. If RMS elects to assume responsibility for the filing, prosecution and/or maintenance of a Joint Patent abandoned by the Pharmaceutical Partners, then upon RMS’ request, the Pharmaceutical Partners shall assign to RMS all Pharmaceutical Partners’ right, title and interest in and to such Joint Patents, and shall execute such documents necessary to evidence such assignment. In the event of any assignment of right, title and interest in and to such Joint Patents abandoned by the Pharmaceutical Partners and assumed by RMS, RMS shall, and hereby does, grant to Pharmaceutical Partners (i) an exclusive, perpetual, irrevocable, fully paid-up and sublicensable license in the Territory in the Pharmaceutical Field, (ii) a non-exclusive, perpetual, irrevocable, fully paid-up and sublicensable license in the Territory in the Diagnostic Field and (iii) a non-exclusive, perpetual, irrevocable, fully paid-up and sublicensable license in the Territory for all other uses, in each case, to any and all such interest in such Joint Patents. For Joint Patents that RMS is responsible for the prosecution and maintenance, Pharmaceutical Partners shall (and shall cause their Affiliates to) reasonably cooperate with RMS in connection with the same, including without limitation, upon the request of RMS, (y) promptly executing any and all Patent applications, formal documents, assignments, or other instruments which RMS deems necessary or reasonably useful for the filing, prosecution, maintenance, enforcement and/or defense of any Patent applications or Patents claiming or covering any such Joint Inventions, which may be filed or prepared at RMS’ cost and expense, and (z) providing copies of or access to such supporting documentation, information, results, and analyses with respect to such Project Invention as is necessary for the filing, prosecution, maintenance, enforcement and/or defense of any Patent applications or Patents claiming or covering any such Joint Inventions. RMS shall keep Pharmaceutical Partners reasonably informed of prosecution activities with respect to the Patent applications for such Joint Patents. RMS shall provide Pharmaceutical Partners with a copy of material communications from any patent authority regarding such Joint Inventions, and shall provide drafts of any material filings or responses to be made to such patent authorities a reasonable amount of time in advance of submitting such filings or responses so that the Pharmaceutical Partners may have an opportunity to review and comment. If RMS abandons, ceases prosecution or does not maintain any such Joint Patents anywhere in the world, then RMS shall provide Pharmaceutical Partners written notice of at least [**] days prior to any deadline for taking action to avoid abandonment (or other loss of rights) and the Pharmaceutical Partners shall have the right, in the Pharmaceutical Partners’ sole discretion, to file for or continue prosecution and/or maintenance of such Joint Patent at their own expense. If the Pharmaceutical Partners elect to assume responsibility for the filing, prosecution and/or maintenance of a Joint Patent abandoned by RMS, then upon Pharmaceutical Partners’ request, RMS shall assign to Pharmaceutical Partners all RMS’ right, title and interest in and to such Joint Patents, and shall execute such documents necessary to evidence such assignment. In the event of any assignment of right, title and interest in and to such Joint Patents abandoned by RMS and assumed by the Pharmaceutical Partners, Pharmaceutical Partners shall, and hereby do, grant to RMS a non-exclusive, perpetual, irrevocable, fully paid-up and sublicensable license in the Territory in the Diagnostic Field and for all other uses in the Territory outside the Pharmaceutical Field, in each case, to any and all such interest in such Joint Patents.