Common use of ATMI Improvements Clause in Contracts

ATMI Improvements. All improvements to the HPC Technology derived from, based on, or invented in whole or in part through ATMI’s use of the Wets Workflow pursuant to this Agreement or using the Wets Workflow purchased herein, whether an ATMI Improvement or not, and all Intellectual Property Rights therein, shall be owned by IM and if initially conceived, reduced to practice or developed by ATMI (whether or not implemented by IM as set forth in Section 4.8.1), shall be assigned to IM as set forth in Section 4.2. IM hereby grants a non-exclusive, royalty-free license (i.e., IM shall not increase the HPC Site License or HPC Enabled Software License due to the implementation or use of such Improvement) to ATMI to use any Improvement (other than an IM Improvement) on or with any Wets Workflow for which ATMI continues to pay the HPC Site License fee and continues to license the HPC-Enabled Informatics Software. Notwithstanding the foregoing, no license to ATMI to use HPC Technology beyond the term or beyond the scope of any license granted to ATMI to use HPC Technology is intended or granted by the preceding sentence. Any notification of a proposed ATMI Improvement shall comply with the procedure set forth in Section 4.8.2, below. Notwithstanding the foregoing, if IM wishes to commercialize any non-obvious ATMI Improvement for sale to third parties, IM shall first negotiate with ATMI in good faith to agree upon reasonable compensation to ATMI in view of the contribution of the ATMI Improvement to the value of the Wets Workflow or a component thereof. If the Parties cannot agree on such compensation then they shall follow the provisions of Section 4.8.3. 4.8.1 Any implementation by IM of ATMI Improvements on ATMI’s behalf shall be the subject of a separately executed statement of work between the parties that shall specify the commercial and other terms. 4.8.2 ATMI may disclose ATMI Improvements to IM pursuant to this paragraph. Before fully disclosing any Confidential Information with respect to an ATMI Improvement to IM, ATMI shall first send a written non-Confidential summary of the proposed ATMI Improvement to the attention of the IM Legal Department. Within [*] days of the non-confidential disclosure, IM shall inform ATMI that IM either does or does not wish to receive a more detailed description of the proposed ATMI Improvement that ATMI may label as Confidential Information (“Formal Disclosure”). If IM does not wish to receive the more detailed description of the ATMI Improvement, ATMI may maintain such ATMI Improvement as a trade secret. For the avoidance of doubt, the preceding sentence shall not change the provisions of this Agreement concerning ownership of Improvements. Furthermore, IM’s ability to sell, license and sub-license HPC Technology shall not be limited by (i) the non-Confidential disclosure above or (ii) any disclosure by ATMI to IM employees separate from any Formal Disclosure (other than disclosures to IM employees that are subject to the IP firewall described in Section 7.5(a) hereof) of an ATMI Improvement that ATMI decides to maintain as a trade secret. Within a reasonable time after its receipt of the Formal Disclosure, IM shall provide notice to ATMI that either (a) IM does not wish to implement the proposed ATMI Improvement, and that it is returning the Confidential Information (except as required for archival purposes), or (b) IM wishes to further study the feasibility of implementing or commercializing the ATMI Improvement including a proposal on how to proceed. Notwithstanding the foregoing, during the one-year period following final acceptance of the first Wets Workflow sold under this Agreement, ATMI shall disclose no more than two (2) potential ATMI Improvements during anyone of the four three-month periods immediately following said final acceptance for consideration by IM above. The restrictions set forth in Section 4.13.1 only shall apply to ATMI Improvements for which there has been a Formal Disclosure (provided that the foregoing shall in no way change or reduce IM’s obligations pursuant to Section 7.5(a) hereof). References to obligations and disclosures Section 7.5 in this Section specifically exclude disclosures by ATMI to IM employees related to improvements, changes or modifications to the Equipment and IM shall be free to sell, license and sub-license HPC Technology relating to Equipment disclosed outside of the Formal Disclosure process. If ATMI proposes an ATMI Improvement following said one-year period, the parties will negotiate in good faith on a case by case basis any special terms and conditions that will be applicable to the sale to Third Parties of Equipment into which such future ATMI Improvements may be implemented. 4.8.3 Notwithstanding Section 12.16 of this Agreement, in the event that the parties cannot agree for a period of [*] after escalation to their respective chief executive officers to a reasonable compensation for a Section 4.8 proposal, then either party may submit the issue of the amount of compensation due to ATMI if IM implements the ATMI Improvement to final and binding arbitration, before a single, mutually-acceptable arbitrator, conducted in accordance with the Commercial Arbitration Rules of AAA, solely for determination of the reasonable compensation. If the parties are unable to select a mutually acceptable arbitrator, AAA shall appoint an arbitrator or provide a method for selection. Any arbitration proceedings shall be conducted in Phoenix, Arizona. Each party shall bear its own expenses, including attorneys’ fees, and the parties will share equally the costs and fees of the arbitrator. Prior to the actual arbitration hearing, each party shall provide the arbitrator a written proposal for a reasonable compensation that such party believes to be fair to both parties in the circumstances. The arbitrator must render a written decision within ten (10) days of the hearing in favor of one party’s proposal or the other, without modification. The arbitrator must determine the prevailing party by assessing the proposal, and its fairness in light of the relevant Intellectual Property Rights, technology contributions, and development and commercialization costs and expenses of each party, as well as the potential markets for the proposed application and whether third party Intellectual Property Rights, development efforts, commercialization efforts or investment is required to commercialize the proposed application. The parties shall use all reasonable efforts to complete any arbitration subject to this section within three (3) months from the filing of notice of a request for such arbitration. The parties undertake and agree that all arbitral proceedings shall be kept confidential, and all information, documentation, materials in whatever form disclosed in the course of such arbitral proceeding shall be used solely for the purpose of those proceedings. Nothing in this section shall require IM to implement the ATMI Improvement following the decision of the arbitrator.