Common use of Development IP Clause in Contracts

Development IP. Any Patents having claims conceived during the course of work undertaken by ADCT in exercise of its rights under this Agreement (the “ADCT Development Work”) including, without limitation the patents and applications on Exhibit 3.1.2 (together the “Development Patents”) shall be owned as follows: (a) Any Development Patents to the extent claiming a PBD or any PBD attached to an antibody other than a Licensed Antibody; and/or methods of making or using any of the foregoing shall be solely owned by MedImmune, regardless of inventorship. ADCT agrees to assign, and does hereby assign, the entire right, title and interest in and to any Development Patents under this Subsection to MedImmune; and to execute or cause to be executed all necessary documents in relation thereto. (b) Any Development Patents to the extent claiming a Licensed Antibody against an Approved Target shall be solely owned by ADCT, regardless of inventorship. MedImmune agrees to assign, and does hereby assign, the entire right, title, and interest in and to any Development Patents under this Subsection to ADCT; and to execute or cause to be executed all necessary documents in relation thereto. For the avoidance of doubt, ADCT shall have no right to any claim in any Development Patent to a PBD or any methods of making or using the same that is/are conceived and/or reduced to practice during the course of ADCT Development Work except as provided in Subsection (c) below. (c) Any Development Patent to the extent claiming an ADC Drug Reagent, and/or methods of making or using the ADC Drug Reagent shall be jointly owned by the Parties; however (i) MedImmune shall have no right to exploit such Patent during the Term, (ii) ADCT shall have the exclusive right to exploit such Patent during the Term, and (iii) MedImmune hereby consents to ADCT’s exploitation during the Term without any duty of accounting except as provided in this Agreement. Subsequent to the Term, the Parties shall provide consent to each other to allow exploitation of any Patent under this Subsection without any duty of accounting. Each Party agrees to assign, and does hereby assign, a joint interest to the other Party to any Development Patents under this Subsection to the extent necessary to effect the purposes hereof; and to execute or cause to be executed all necessary documents in relation thereto. (d) The Parties agree that no single Development Patent shall contain any two or more of the following: (i) claims directed to a PBD, or any PBD attached to an antibody that is not a Licensed Antibody against an Approved Target, (ii) claims directed to a Licensed Antibody against an Approved Target, and (iii) claims directed to an ADC Drug Reagent. The Parties agree that such claims shall be made in separate patent applications, with ownership determined as provided in Subsections 3.1.2(a), 3.1.2(b), and 3.1.2(c). (e) The ownership of any Development Patents under this Section that do not fall into Subsection 3.1.2 (a), Subsection 3.1.2 (b), or Subsection and 3.1.2 (c) shall be determined under U.S. patent law. (f) In the event that any claim in the Development Patents is rejected under the judicially-created doctrine of obviousness-type double patenting in the United States with respect to another of the Development Patents, the Parties agree to reasonably cooperate in obviating such rejection. For the avoidance of doubt, any Patent conceived by a Third Party otherwise in connection with this Agreement and in-licensed to any Party is not a Development Patent.