Common use of Intellectual Property and Patent Rights Clause in Contracts

Intellectual Property and Patent Rights. 7.1 Subject to the licenses granted by the Partnership to Becton and Nanogen, individually and jointly, in Paragraph 6.1(c), the entire right, title and interest in all Program Inventions shall be owned solely by the Partnership. Becton hereby assigns its entire right, title and interest in all Becton Program Inventions and Joint Program Inventions to the Partnership, and Nanogen hereby assigns its entire right, title and interest in all Nanogen Program Inventions and Joint Program Inventions to the Partnership. 7.2 Each Researching Party promptly shall disclose to the other Researching Party and the Partnership the making, conception or reduction to practice of Program Inventions by employees or others acting on behalf of such party. Each of Nanogen and Becton hereby represents and warrants that all employees and others acting on its respective behalf in performing its obligations under this Agreement shall be obligated under a binding written agreement to assign to it, or as it shall direct, all Program Inventions made or developed by such employees or others. 7.3 Promptly following any disclosure of Program Inventions pursuant to Paragraph 2.2 and Paragraph 7.2, the Research Management Committee, in consultation with patent attorneys for Becton and Nanogen, shall discuss and determine, in good faith, whether patent applications should be prepared and filed for such disclosed Program Inventions. 7.4 If patent applications are to be prepared and filed pursuant to Paragraph 7.3, then the Research Management Committee shall discuss and determine, in good faith, for each of such Program Inventions, which of the parties shall be responsible for the preparation, filing, prosecution and maintenance of such patent applications in the Primary Filing Countries. Each of such patent applications shall become part of the Program Inventions, and Appendix A shall be amended accordingly to evidence such Program Inventions. 7.5 (1) If the Research Management Committee determines that a particular patent application be filed in a country or countries in addition to the Primary Filing Countries, then the Research Management Committee shall determine which Researching Party shall be responsible for the filing, prosecution and maintenance of such patent application, and such patent application shall be part of the Program Inventions.

Intellectual Property and Patent Rights. 7.1 Subject to During the licenses granted by the Partnership to Becton and Nanogen, individually and jointly, in Paragraph 6.1(c)term of this Agreement, the entire right, title and interest in all Program Inventions shall be owned solely jointly by the Partnership. Becton hereby assigns its entire right, title and interest in all Becton Program Inventions and Joint Program Inventions to the Partnership, HR&T and Nanogen hereby assigns its entire right, title and interest in all Nanogen Program Inventions and Joint Program Inventions to the Partnershipmay be used only as they mutually agree. 7.2 Each Researching Party party hereto promptly shall disclose to the other Researching Party and the Partnership party the making, conception or reduction to practice of Program Inventions by employees or others acting on behalf of such party. Each of Nanogen and Becton HR&T hereby represents and warrants that all employees and others acting on its respective behalf in performing its obligations under this Agreement shall be obligated under a binding written agreement to assign to it, or as it shall direct, all Program Inventions made or developed by such employees or others. 7.3 Promptly following any disclosure of Program Inventions pursuant to Paragraph 2.2 and Paragraph 7.2, the Research Management Committee, in consultation with patent attorneys for Becton HR&T and Nanogen, shall discuss and determine, in good faith, whether patent applications should be prepared and filed for such disclosed Program Inventions. 7.4 If patent applications are to be prepared and filed pursuant to Paragraph 7.3, then the Research Management Committee shall discuss and determine, in good faith, for each of such Program Inventions, which of the parties shall be responsible for the preparation, filing, prosecution and maintenance of such patent applications in the Primary Filing Countries. Each of such patent applications shall become part of the Program Inventions, and Appendix A Exhibit D shall be amended accordingly to evidence such Program Inventions. 7.5 (1a) If the Research Management Committee determines that a particular patent application be filed in a country or countries in addition to the Primary Filing Countries, then the Research Management Committee shall determine which Researching Party party shall be responsible for the filing, prosecution and maintenance of such patent application, and such patent application shall be part of the Program Inventions. (b) If the Research Management Committee determines not to file a particular patent application in a country or countries in addition to the Primary Filing Countries, either party, alone, after written waiver by the other party, may file such particular patent application in such country or countries and shall pay, without right to reimbursement thereof, all costs and expenses for filing, prosecution and maintenance of patent application filed in such country or countries, and notwithstanding the provisions of Paragraph 6.1, that party shall own, exclusively, all right, title and interest in such patent application. (c) If the other party of Paragraph 7.5(b) does not provide such written waiver, then any such particular patent application shall be treated as if the Research Management Committee had made a declaration to file the particular patent application in a country or countries in addition to the Primary Filing Countries in accordance with Paragraph 7.5(a). 7.6 Each party shall keep the Research Management Committee currently informed of the filing and progress of all material aspects of the prosecution of all such patent applications and of the issuance of patents, and shall consult with the Research Management Committee concerning any decisions which would affect the scope of any issued claims and other prosecutorial details, including the potential abandonment of any application. 7.7 Upon request, each party shall execute and deliver to the other party all descriptions, applications, assignments and other documents and instruments as are necessary or proper to carry out the provisions of Paragraphs 7.1, 7.2, 7.3, 7.4, 7.5 and 7.6 without further compensation, except as otherwise provided in Paragraph 1.15, and the parties shall cooperate with and assist each other or their nominees in all reasonable ways and at all reasonable times, including, but not limited to, testifying in all legal proceedings, signing all lawful papers and in general performing all lawful acts reasonable, necessary or proper, to aid the other party in obtaining, maintaining, defending and enforcing all lawful patent, copyright, trade secret, know-how and the like in the Primary Filing Countries and elsewhere. 7.8 Except as otherwise provided in this Agreement, under no circumstances shall either party, as a result of this Agreement, obtain any ownership interest or other right in any technology, know-how, trade secrets, patents, pending patent applications or products of the other party, including items owned, controlled or developed by the other, or transferred by the other to such party at any time pursuant to this Agreement. Upon termination of this Agreement unless otherwise provided in another agreement between HR&T and Nanogen, (i) all HR&T Program Inventions, Nanogen Program Inventions and Joint Program Inventions, which consist solely of improvements to HR&T Intellectual Property, shall be the sole property of HR&T, (ii) all Nanogen Program Inventions, HR&T Program Inventions and Joint Program Inventions, which consist solely of improvements to Nanogen Intellectual Property, shall be the sole property of Nanogen, and (iii) Nanogen, at its option, shall have the right for 120 days after the date of termination of this Agreement to negotiate with HR&T to enter into a license for HR&T's rights to any Program Invention not included within the provisions of clause (i) or (ii) above. If Nanogen chooses to exercise such option, HR&T and Nanogen shall negotiate in good faith to enter into a license for such Program Invention or Inventions. Any such license shall provide that Nanogen will pay a reasonable royalty to HR&T for the license rights to such Program Invention or Inventions. In determining what is a reasonable royalty rate, HR&T's relative contribution to such Program Invention or Inventions shall be taken into account. It is understood and agreed by the parties hereto that this Agreement does not grant to either party any license or other right, other than the licenses granted in Paragraph 6.1, the assignments granted in Paragraph 7.1 and the licenses granted in this Paragraph 7.8. (a) During the term of this Agreement, Nanogen and HR&T each acknowledge each other's interest in publishing certain of its results to obtain recognition within the scientific community and to advance the state of scientific knowledge. Each party also recognizes the mutual interest in obtaining valid patent protection and protecting business interests. Consequently, each party, its employees or consultants wishing to make a publication (including any oral disclosure made without obligation of confidentiality) relating to work performed by such party as part of the Research Program (the "Publishing Party") shall transmit to the Research Management Committee a copy of the proposed written publication at least forty-five (45) days prior to submission for publication, or an outline of such oral disclosure at least fifteen (15) days prior to presentation. The Research Management Committee shall have the right (i) to propose modifications to the publication for patent reasons and (ii) to request a reasonable delay in publication in order to protect patentable information. (b) If the Research Management Committee requests such a delay, the Publishing Party shall delay submission or presentation of the publication for a period of ninety (90) days to enable patent applications protecting each party's rights in such information to be filed in accordance with this Article 7. Upon the expiration of forty-five (45) days, in the case of proposed written disclosures, or fifteen (15) days, in the case of proposed oral disclosures, from transmission to the Research Management Committee, the Publishing Party shall be free to proceed with the written publication or the presentation, respectively, unless the Research Management Committee has requested the delay described above.

Intellectual Property and Patent Rights. 7.1 Subject to the licenses granted by the Partnership to Becton and Nanogen, individually and jointly, in Paragraph 6.1(c), the The entire right, title and interest in and to all Program Inventions shall be owned solely by the Partnership. Becton hereby assigns its entire rightNanogen, title and interest in all Becton Program Inventions and Joint Program Inventions subject to the Partnership, and Nanogen hereby assigns its entire right, title and interest in all Nanogen Program Inventions and Joint Program Inventions license granted to the PartnershipAventis R&T pursuant to Paragraph 6.1 (b). 7.2 Each Researching Party party hereto promptly shall disclose to the other Researching Party and the Partnership party the making, conception or reduction to practice of Program Inventions by employees or others acting on behalf of such party. Each of Nanogen and Becton hereby represents and warrants that all employees and others acting on its respective behalf in performing its obligations under this Agreement shall be obligated under a binding written agreement to assign to it, or as it shall direct, all Program Inventions made or developed by such employees or others. 7.3 Promptly following Following any disclosure of Program Inventions pursuant to Paragraph 2.2 and Paragraph 7.2Xxxxxxxxx 0.0, the Research Management CommitteeXxxxxxx shall, in consultation with patent attorneys for Becton and Nanogenits sole discretion, shall discuss and determine, in good faith, determine whether patent applications should be prepared and filed for such disclosed Program Inventions. 7.4 If . Nanogen shall inform Aventis R&T of the filing of all patent applications are relating to be prepared and filed pursuant to Paragraph 7.3, then the Research Management Committee shall discuss and determine, in good faith, for each of such Program Inventions. In the event Nanogen determines not to file a patent application covering a particular Program Invention in a particular country or countries, which of the parties Aventis R&T may, after written waiver by Nanogen, file such patent application in such country or countries and shall be responsible pay, without right to reimbursement thereof, all costs and expenses for the preparation, filing, prosecution and maintenance of such patent applications in such country or countries. Such patent applications filed hereunder shall remain, for purposes of this Agreement, Program Inventions as defined herein. 7.4 Upon request, each party shall execute and deliver to the Primary Filing Countriesother all descriptions, applications, assignments and other documents and instruments as are necessary or proper to carry out the provisions of Paragraphs 7.1, 7.2 and 7.3 without further compensation, and the parties shall cooperate with and assist each other or their nominees in all reasonable ways and at all reasonable times, including, but not limited to, testifying in all legal proceedings, signing all lawful papers and in general performing all lawful acts reasonable, necessary or proper, to aid in obtaining, maintaining, defending and enforcing all lawful patents, copyrights, trade secrets, and related know-how. 7.5 Except as otherwise provided in this Agreement, under no circumstances shall either party, as a result of this Agreement, obtain any ownership interest or other right in any technology, know-how, trade secrets, patents, pending patent applications or products of the other party, including items owned, controlled or developed by the other, or transferred by the other to such party at any time pursuant to this Agreement. During the term of this Agreement and upon its expiration or termination, all Program Inventions arising hereunder shall be the sole property of Nanogen subject to the license granted to Aventis R&T pursuant to Paragraph 6.1 (b). It is understood and agreed by the parties hereto that this Agreement does not grant to either party any license or other right, other than the licenses granted in Paragraph 6 or the assignments granted in this Paragraph 7. (a) During the term of this Agreement, Aventis R&T and Nanogen each acknowledge each other's interest in publishing certain of its results to obtain recognition within the scientific community and to advance the state of scientific knowledge. Each party also recognizes the mutual interest in obtaining valid patent protection and protecting business interests. Consequently, each party, its employees or consultants wishing to make a publication (including any oral disclosure made without obligation of confidentiality) relating to work performed by such patent applications shall become party as part of the Research Program Inventions(the "Publishing Party") shall transmit to the Research Management Committee a copy of the proposed written publication at least forty-five (45) days prior to submission for publication, or an outline of such oral disclosure at least fifteen (15) days prior to presentation. The Research Management Committee shall have the right (i) to propose modifications to the publication for patent reasons and Appendix A shall be amended accordingly (ii) to evidence such Program Inventionsrequest a reasonable delay in publication in order to protect patentable information. 7.5 (1b) If the Research Management Committee determines that requests such a particular delay, the Publishing Party shall delay submission or presentation of the publication for a period of ninety (90) days to enable Nanogen to prepare and file patent application applications protecting its rights in such information to be filed in a country accordance with this Article 7. Upon the expiration of forty-five (45) days, in the case of proposed written disclosures, or countries fifteen (15) days, in addition the case of proposed oral disclosures, from transmission to the Primary Filing CountriesResearch Management Committee, then the Publishing Party shall be free to proceed with the written publication or the presentation, respectively, unless the Research Management Committee shall determine which Researching Party shall be responsible for has requested the filing, prosecution and maintenance of such patent application, and such patent application shall be part of the Program Inventionsdelay described above.

Intellectual Property and Patent Rights. 7.1 Subject to During the licenses granted by the Partnership to Becton and Nanogen, individually and jointly, in Paragraph 6.1(c)term of this Agreement, the entire right, title and interest in all Program Inventions shall be owned solely jointly by the Partnership. Becton hereby assigns its entire right, title and interest in all Becton Program Inventions and Joint Program Inventions to the Partnership, HR&T and Nanogen hereby assigns its entire right, title and interest in all Nanogen Program Inventions and Joint Program Inventions to the Partnershipmay be used only as they mutually agree. 7.2 Each Researching Party party hereto promptly shall disclose to the other Researching Party and the Partnership party the making, conception or reduction to practice of Program Inventions by employees or others acting on behalf of such party. Each of Nanogen and Becton HR&T hereby represents and warrants that all employees and others acting on its respective behalf in performing its obligations under this Agreement shall be obligated under a binding written agreement to assign to it, or as it shall direct, all Program Inventions made or developed by such employees or others. 7.3 Promptly following any disclosure of Program Inventions pursuant to Paragraph 2.2 and Paragraph 7.2, the Research Management Committee, in consultation with patent attorneys for Becton HR&T and Nanogen, shall discuss and determine, in good faith, whether patent applications should be prepared and filed for such disclosed Program Inventions. 7.4 If patent applications are to be prepared and filed pursuant to Paragraph 7.3, then the Research Management Committee shall discuss and determine, in good faith, for each of such Program Inventions, which of the parties shall be responsible for the preparation, filing, prosecution and maintenance of such patent applications in the Primary Filing Countries. Each of such patent applications shall become part of the Program Inventions, and Appendix A Exhibit D shall be amended accordingly to evidence such Program Inventions. 7.5 (1a) If the Research Management Committee determines that a particular patent application be filed in a country or countries in addition to the Primary Filing Countries, then the Research Management Committee shall determine which Researching Party party shall be responsible for the filing, prosecution and maintenance of such patent application, and such patent application shall be part of the Program Inventions. (b) If the Research Management Committee determines not to file a particular patent application in a country or countries in addition to the Primary Filing Countries, either party, alone, after written waiver by the other party, may file such particular patent application in such country or countries and shall pay, without right to reimbursement thereof, all costs and expenses for filing, prosecution and maintenance of patent application filed in such country or countries, and notwithstanding the provisions of Paragraph 6.1, that party shall own, exclusively, all right, title and interest in such patent application. (c) If the other party of Paragraph 7.5(b) does not provide such written waiver, then any such particular patent application shall be treated as if the Research Management Committee had made a declaration to file the particular patent application in a country or countries in addition to the Primary Filing Countries in accordance with Paragraph 7.5(a). 7.6 Each party shall keep the Research Management Committee currently informed of the filing and progress of all material aspects of the prosecution of all such patent applications and of the issuance of patents, and shall consult with the Research Management Committee concerning any decisions which would affect the scope of any issued claims and other prosecutorial details, including the potential abandonment of any application. 7.7 Upon request, each party shall execute and deliver to the other party all descriptions, applications, assignments and other documents and instruments as are necessary or proper to carry out the provisions of Paragraphs 7.1, 7.2, 7.3, 7.4, 7.5 and 7.6 without further compensation, except as otherwise provided in Paragraph 1.15, and the parties shall cooperate with and assist each other or their nominees in all reasonable ways and at all reasonable times, including, but not limited to, testifying in all legal proceedings, signing all lawful papers and in general performing all lawful acts reasonable, necessary or proper, to aid the other party in obtaining, maintaining, defending and enforcing all lawful patent, copyright, trade secret, know-how and the like in the Primary Filing Countries and elsewhere. 7.8 Except as otherwise provided in this Agreement, under no circumstances shall either party, as a result of this Agreement, obtain any ownership interest or other right in any technology, know-how, trade secrets, patents, pending patent applications or products of the other party, including items owned, controlled or developed by the other, or transferred by the other to such party at any time pursuant to this Agreement. Upon termination of this Agreement unless otherwise provided in another agreement between HR&T and Nanogen, (i) all HR&T Program Inventions, Nanogen Program Inventions and Joint Program Inventions, which consist solely of improvements to HR&T Intellectual Property, shall be the sole property of HR&T, (ii) all Nanogen Program Inventions, HR&T Program Inventions and Joint Program Inventions, which consist solely of improvements to Nanogen Intellectual Property, shall be the sole property of Nanogen, and (iii) Nanogen, at its option, shall have the right for 120 days after the date of termination of this Agreement to negotiate with HR&T to enter into a license for HR&T's rights to any Program Invention not included within the provisions of clause (i) or (ii) above. If Nanogen chooses to exercise such option, HR&T and Nanogen shall negotiate in good faith to enter into a license for such Program Invention or Inventions. Any such license shall provide that Nanogen will pay a reasonable royalty to HR&T for the license rights to such Program Invention or Inventions. In determining what is a reasonable royalty rate, HR&T's relative contribution to such program Invention or Inventions shall be taken into account. It is understood and agreed by the parties hereto that this Agreement does not grant to either party any license or other right, other than the licenses granted in Paragraph 6.1, the assignments granted in Paragraph 7.1 and the licenses granted in Paragraph 7.8. (a) During the term of this Agreement, Nanogen and HR&T each acknowledge each other's interest in publishing certain of its results to obtain recognition within the scientific community and to advance the state of scientific knowledge. Each party also recognizes the mutual interest in obtaining valid patent protection and protecting business interests. Consequently, each party, its employees or consultants wishing to make a publication (including any oral disclosure made without obligation of confidentiality) relating to work performed by such party as part of the Research Program (the "Publishing Party") shall transmit to the Research Management Committee a copy of the proposed written publication at least forty-five (45) days prior to submission for publication, or an outline of such oral disclosure at least fifteen (15) days prior to presentation. The Research Management Committee shall have the right (i) to propose modifications to the publication for patent reasons and (ii) to request a reasonable delay in publication in order to protect patentable information. (b) If the Research Management Committee requests such a delay, the Publishing Party shall delay submission or presentation of the publication for a period of ninety (90) days to enable patent applications protecting each party's rights in such information to be filed in

Intellectual Property and Patent Rights. 7.1 Subject to the licenses granted by the Partnership to Becton and Nanogen, individually and jointly, in Paragraph 6.1(c), the The entire right, title and interest in all Program Inventions shall be owned solely jointly by the Partnership. Becton hereby assigns its entire right, title and interest in all Becton Program Inventions and Joint Program Inventions to the Partnership, HR&T and Nanogen hereby assigns its entire right, title and interest in all Nanogen Program Inventions and Joint Program Inventions to the Partnershipmay be used only as they mutually agree. 7.2 Each Researching Party party hereto promptly shall disclose to the other Researching Party and the Partnership party the making, conception or reduction to practice of Program Inventions by employees or others acting on behalf of such party. Each of Nanogen and Becton HR&T hereby represents and warrants that all employees and others acting on its respective behalf in performing its obligations under this Agreement shall be obligated under a binding written agreement to assign to it, or as it shall direct, all Program Inventions made or developed by such employees or others. 7.3 Promptly following any disclosure of Program Inventions pursuant to Paragraph 2.2 and Paragraph 7.2, the Research Management Committee, in consultation with patent attorneys for Becton HR&T and Nanogen, shall discuss and determine, in good faith, whether patent applications should be prepared and filed for such disclosed Program Inventions. 7.4 If patent applications are to be prepared and filed pursuant to Paragraph 7.3, then the Research Management Committee shall discuss and determine, in good faith, for each of such Program Inventions, which of the parties shall be responsible for the preparation, filing, prosecution and maintenance of such patent applications in the Primary Filing Countries. Each of such patent applications shall become part of the Program Inventions, and Appendix A Exhibit D shall be amended accordingly to evidence such Program Inventions. 7.5 (1) If the Research Management Committee determines that a particular patent application be filed in a country or countries in addition to the Primary Filing Countries, then the Research Management Committee shall determine which Researching Party party shall be responsible for the filing, prosecution and maintenance of such patent application, and such patent application shall be part of the Program Inventions. (a) If the Research Management Committee determines not to file a particular patent application in a country or countries in addition to the Primary Filing Countries, either party, alone, after written waiver by the other party, may file such particular patent application in such country or countries and shall pay, without right to reimbursement thereof, all costs and expenses for filing, prosecution and maintenance of patent application filed in such country or countries, and notwithstanding the provisions of Paragraph 6.1, that party shall own, exclusively, all right, title and interest in such patent application. (b) If the other party of Paragraph 7.5(b) does not provide such written waiver, then any such particular patent application shall be treated as if the Research Management Committee had made a declaration to file the particular patent application in a country or countries in addition to the Primary Filing Countries in accordance with Paragraph 7.5(a). 7.6 Each party shall keep the Research Management Committee currently informed of the filing and progress of all material aspects of the prosecution of all such patent applications and of the issuance of patents, and shall consult with the Research Management Committee concerning any decisions which would affect the scope of any issued claims and other prosecutorial details, including the potential abandonment of any application. 7.7 Upon request, each party shall execute and deliver to the other party all descriptions, applications, assignments and other documents and instruments as are necessary or proper to carry out the provisions of Paragraphs 7.1, 7.2, 7.3, 7.4, 7.5 and 7.6 without further compensation, except as otherwise provided in Paragraph 1.15, and the parties shall cooperate with and assist each other or their nominees in all reasonable ways and at all reasonable times, including, but not limited to, testifying in all legal proceedings, signing all lawful papers and in general performing all lawful acts reasonable, necessary or proper, to aid the other party in obtaining, maintaining, defending and enforcing all lawful patent, copyright, trade secret, know-how and the like in the Primary Filing Countries and elsewhere. 7.8 Except as otherwise provided in this Agreement, under no circumstances shall either party, as a result of this Agreement, obtain any ownership interest or other right in any technology, know-how, trade secrets, patents, pending patent applications or products of the other party, including items owned, controlled or developed by the other, or transferred by the other to such party at any time pursuant to this Agreement. It is understood and agreed by the parties hereto that this Agreement does not grant to either party any license or other right, other than the licenses granted in Paragraph 6.1, the assignments granted in Paragraph 7.1 and the licenses granted in Paragraph 8.3. 7.9 During the term of this Agreement, Nanogen and HR&T each acknowledge each other's interest in publishing certain of its results to obtain recognition within the scientific community and to advance the state of scientific knowledge. Each party also recognizes the mutual interest in obtaining valid patent protection and protecting business interests. Consequently, each party, its employees or consultants wishing to make a publication (including any oral disclosure made without obligation of confidentiality) relating to work performed by such party as part of the Research Program (the "Publishing Party") shall transmit to the Research Management Committee a copy of the proposed written publication at least forty-five (45) days prior to submission for publication, or an outline of such oral disclosure at least fifteen (15) days prior to presentation. The Research Management Committee shall have the right (i) to propose modifications to the publication for patent reasons and (ii) to request a reasonable delay in publication in order to protect patentable information. (a) If the Research Management Committee requests such a delay, the Publishing Party shall delay submission or presentation of the publication for a period of ninety (90) days to enable patent applications protecting each party's rights in such information to be filed in