Joint Ownership and Prosecution. 10.1.1. All rights to all Inventions relating to, or covering, [*****] (each a “Jointly Owned Invention”) shall be owned jointly by Company and Merck. Merck hereby assigns to Company an undivided one-half interest in, to and under the Jointly Owned Inventions that are invented or created solely by Merck or by Persons having an obligation to assign such rights to Merck. Company hereby assigns to Merck an undivided one-half interest in, to and under any Jointly Owned Inventions that are invented or created solely by Company or by Persons having an obligation to assign such rights to Company. For those countries where a specific license is required for a joint owner of a Jointly Owned Invention to practice such Jointly Owned Invention in such countries: (a) Merck hereby grants to Company a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under Merck’s right, title and interest in and to all Jointly Owned Inventions to use such Inventions in accordance with the terms of this Agreement; and (b) Company hereby grants to Merck a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under Company’s right, title and interest in and to all Jointly Owned Inventions to use such Inventions in accordance with the terms of this Agreement. For clarity, the terms of this Agreement do not provide Company or Merck with any rights, title or interest or any license to the other Party’s intellectual property except as necessary to conduct the Study and as expressly provided under this Agreement, including as set forth in Section 10.4.
10.1.2. Each Party shall have the right to [*****].
10.1.3. Promptly following the Effective Date, but in any event as soon as practicable after the discovery of a Jointly Owned Invention, patent representatives of each of the Parties shall meet (in person or by telephone) to discuss the patenting strategy for any Jointly Owned Inventions that may arise. In particular, the Parties shall discuss which Party will file and prosecute a patent application (including any provisional, substitution, divisional, continuation, continuation in part, reissue, renewal, reexamination, extension, supplementary protection certificate and the like) in respect of any Jointly Owned Invention (each, a “Joint Patent Application”) and whether the Parties wish to appoint counsel that is mutually acceptable to the Parties. In any event, t...
Joint Ownership and Prosecution. 11.1.1 Subject to Sections 10.2 and 10.3, all rights to all Inventions relating to or covering the combined use of the Pfizer Compound and the Ideaya Compound (each a “Jointly Owned Invention”) shall belong jointly to Pfizer and Ideaya. For those countries where a specific license is required for a joint owner of a Jointly Owned Invention to practice such Jointly Owned Invention in such countries, (i) Ideaya hereby grants to Pfizer a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under Ideaya’s right, title and interest in and to all Jointly Owned Inventions to use such Inventions for the Permitted Use and any other use expressly permitted by this Agreement, and (ii) Pfizer hereby grants to Ideaya a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under Pfizer’s right, title and interest in and to all Jointly Owned Inventions to use such Inventions for the Permitted Use and any other use expressly permitted by this Agreement. For clarity, the terms of this Agreement do not provide Pfizer or Ideaya with any rights, title or interest or any license to the other Party’s background intellectual property except as necessary to conduct the Study and as expressly set forth in Section 10.4. Each Party shall have the right to freely exploit each Jointly Owned Invention, both within and outside the scope of the Study, without accounting to or any other obligation to the other Party, and each Party may grant licenses (with a right to sublicense) to Third Parties under such Party’s interest in each Jointly Owned Invention.
11.1.2 Promptly following the Effective Date, patent representatives of each of the Parties shall meet (in person or by telephone) to discuss the patenting strategy for any Jointly Owned Inventions which may arise. In particular, the Parties shall discuss which Party will file a patent application (including any provisional, substitution, divisional, continuation, continuation in part, reissue, renewal, reexamination, extension, supplementary protection certificate and the like) in respect of any Jointly Owned Invention (each, a “Joint Patent Application”) and whether the Parties wish to appoint [***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and would likely cause competitive harm to the registrant if publicly ...
Joint Ownership and Prosecution. 10.1.1 Subject to Section 10.2 and Section 10.3, all rights to all Inventions relating to, or covering, [*] (each a “Jointly Owned Invention”) shall be negotiated in good faith in an additional agreement setting forth the rights of the Parties with respect to such Jointly Owned Invention (the “Joint Rights Agreement”), which Joint Rights Agreement shall be executed within [*] days after the Effective Date, and shall contain the provisions set forth in Sections 10.1.2 and 10.1.3 of this Agreement. The Parties acknowledge that the Office of the Chief Scientist of the Ministry of Economy of the State of Israel (the “OCS”) must consent to the Joint Rights Agreement before such Agreement becomes effective. Promptly after the Effective Date, BioLineRx shall use its best efforts to obtain the consent of the OCS to the Joint Rights Agreement, having the terms set forth in Sections 10.1.2 and 10.1.3 below, and shall use its best efforts to seek to obtain such consent no later than [*] after the Effective Date. BioLineRx shall be solely responsible for all costs and fees, or other compensation to the OCS or any other Third Party, required to secure such rights. The parties acknowledge that there is a possibility that the OCS may request changes in this Agreement and the Joint Rights Agreement as a result of its review of the Joint Rights Agreement. In such event, the Parties shall negotiate in good faith to agree on amendments to either or both of such agreements in accordance with the OCS request. [*]
10.1.2 Subject to any changes that may be required in order to obtain the consent of the OCS to the Joint Rights Agreement as set forth in Section 10.1.1, such agreement will contain the following terms:
a. For Jointly Owned Inventions that are invented or created jointly by Merck or by Persons having an obligation to assign such rights to Merck, and by BioLineRx or by Persons having an obligation to assign such rights to BioLineRx, each Party shall have an undivided one-half interest in, to and under any such Jointly Owned Inventions. [*]
b. [*]
c. [*]
d. If one Party brings any prosecution or enforcement action or proceeding against a Third Party with respect to any Joint Patent, the second Party agrees to be joined as a party plaintiff where necessary and to give the first Party reasonable assistance and authority to file and prosecute the suit. The costs and expenses of the (first) Party bringing suit under this subsection (d) shall be borne by such Party, and any...
Joint Ownership and Prosecution. 10.1.1 Subject to Sections 10.2 and 10.3, all rights to all Inventions relating specifically to the Combination, any combinations between an Alliance Compound and a Vaximm Class Compound, or a Vaximm Compound and an Alliance Class Compound (each a “Jointly Owned Invention”) shall belong jointly to Vaximm and the Alliance. Each Party shall and hereby does assign to the other Party sufficient rights, title and interest in each Jointly Owned Invention so that each of Vaximm and the Alliance owns an undivided one-half interest in the same. Unless otherwise mutually agreed, each Party shall have the right to freely exploit the Joint IP, both within and outside the scope of the Study, without accounting to or any other obligation to the other Party, and each Party may grant licenses (with a right to sublicense) to Third Parties under such Party’s interest in the Joint IP, in each case subject to the restrictions in Article 3 and this Article 10. For those countries where a specific license is required for a joint owner of a Jointly Owned Invention to practice such Jointly Owned Invention in such countries, (i) the Alliance hereby grants to Vaximm a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under the Alliance’s right, title and interest in and to all Jointly Owned Inventions to use such Inventions for any use, and (ii) Vaximm hereby grants to the Alliance a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under Vaximm’s right, title and interest in and to all Jointly Owned Inventions to use such Inventions for any use, in each case subject to the restrictions in Article 3 and this Article 10. For clarity, (a) the terms of this Agreement do not provide Vaximm or the Alliance any rights to use or commercialize the other Party’s Class Compounds, alone or in combination with that Party’s Class Compounds, or with any rights, title or interest or any license to the other Party’s Background Intellectual Property except as necessary to conduct the Study and as expressly set forth in Section 10.4, and (b) the Parties shall discuss and mutually agree on disclosures towards a patent authority with respect to the Combination of the Vaximm Compound and the Alliance Compound, with each Party’s consent not to be unreasonably withheld. Until such consent is reached, (x) Vaximm shall not disclose to a patent authority the Protocol, any...
Joint Ownership and Prosecution. 10.1.1. [***].
10.1.2. [***].
10.1.3. [***].
10.1.4. [***].
10.1.5. [***].
10.1 6. [***].
Joint Ownership and Prosecution. (a) All rights to all Inventions relating to, or covering, the Combination that are [***] or [***] (each a “Jointly Owned Invention”) shall be owned jointly by Intensity and MSD. MSD hereby assigns to Intensity an undivided one-half interest in, to and under the Jointly Owned Inventions that are invented or created solely by MSD or by Persons having an obligation to assign such rights to MSD. Intensity hereby assigns to MSD an undivided one-half interest in, to and under any Jointly Owned Inventions that are invented or created solely by Intensity or by Persons having an obligation to assign such rights to Intensity. For those countries where a specific license is required for a joint owner of a Jointly Owned Invention to exploit such Jointly Owned Invention in such countries: (a) MSD hereby grants to Intensity a perpetual, irrevocable, non-exclusive, worldwide, royalty-free, fully paid-up license, transferable and sublicensable, under MSD’s right, title and interest in and to all Jointly Owned Inventions to exploit such Jointly Owned Inventions in accordance with the terms of this Agreement, including Section 10.1.1(b); and (
Joint Ownership and Prosecution. 10.1.1 Subject to Section 10.2 and Section 10.3, all rights to [***] (each, a “Jointly Owned Invention”) shall belong jointly to ImmunoGen and Xxxxxxxx. Xxxxxxxx hereby assigns to ImmunoGen an undivided one-half interest in, to and under the Jointly Owned Inventions that are invented or created by Xxxxxxxx or by Persons having an obligation to assign such rights to Xxxxxxxx. ImmunoGen hereby assigns to Xxxxxxxx an undivided one-half interest in, to and under any Jointly Owned Inventions that are invented or created by ImmunoGen or by Persons having an obligation to assign such rights to ImmunoGen. ImmunoGen and Xxxxxxxx shall each be entitled to use the Jointly Owned Inventions in accordance with Section 10.1.
Joint Ownership and Prosecution. (a) Subject to Sections 17.2 and 17.3, all rights to all Study Inventions relating to, or covering (i.e., contains a claim which would be infringed by), [***] (a “Jointly
Joint Ownership and Prosecution. Patent Enforcement
Joint Ownership and Prosecution. 10.1.1 All rights to all Inventions relating to, or covering, [***] that are not MSD Inventions or Company Inventions [***] (each a “Jointly Owned Invention”) shall be owned jointly by Company and MSD [***]
10.1.2 Each Party shall have the right to [***].
10.1.3 [***]
10.1.4 Except as expressly provided in this Agreement and in furtherance and not in limitation of Section 9.1, each Party agrees to file no patent application based on the other Party’s Confidential Information, and to not give any assistance to any Third Party for such application, without the other Party’s prior written authorization.
10.1.5 [***] shall have the first right, but not the obligation, to initiate legal action to enforce all Joint Patents against infringement and to protect all Jointly Owned Inventions from misappropriation by any Third Party, [***] or to defend any declaratory judgment action relating thereto, at its sole expense. In the event that [***] fails to initiate or defend any such action within [***] after being first notified of such infringement, [***] shall have the right to do so at its sole expense. [***] shall have the first right, but not the obligation, to initiate legal action to enforce any applicable Joint Patent against infringement and to protect all applicable Jointly Owned Inventions from misappropriation by any Third Party, [***] or to defend any declaratory judgment action relating thereto, at its sole expense. In the event that [***] fails to initiate or defend any such action within [***] after being first notified of such infringement, [***] shall have the right to do so at its sole expense. [***].
10.1.6 If one Party brings any prosecution or enforcement action or proceeding against a Third Party with respect to any [***], the second Party agrees to be joined as a party plaintiff where necessary and to give the first Party reasonable assistance and authority to file and prosecute the suit. The costs and expenses of the Party bringing suit under this Section 10.1.6 shall be borne by such Party, and any damages or other monetary awards recovered shall be shared as follows: [***]. A settlement or consent judgment or other voluntary final disposition of a suit under this Section 10.1.6 may not be entered into without the consent of the Party not bringing the suit.
