Common use of Joint Ownership Clause in Contracts

Joint Ownership. Each Party shall have an equal undivided interest in and to each jointly owned invention (hereinafter “Invention”), as well as in and to all patent applications and patents thereon in all countries, subject to the following: a. each Party shall be free to license, make, have made or use its undivided interest in Inventions provided that a Party engaged in any such activity shall first obtain the consent of the other Party hereto (the “non-using Party”), which consent may be withheld in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage to the non-using Party, and, where consent is given, shall account to the non-using Party for income derived from such activities upon terms and conditions to be agreed between the Parties prior to the commencement of such activities, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest in Inventions to a third party without first providing the other Party to such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained in a bona fide offer from a third party; c. each Party shall obtain the consent of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be entitled to license the Invention from the Filing Party in consideration for royalties to be mutually agreed upon.

Appears in 2 contracts

Samples: Preferred Supplier Agreement, Preferred Supplier Agreement (Tesco Corp)

AutoNDA by SimpleDocs

Joint Ownership. Each Party Joint Result(s) shall have an equal undivided interest be the property of both Parties in and proportion to each Party’s intellectual contribution, in case both Parties’ employees, researchers, research fellows, students or individuals equivalent to those persons have jointly generated that joint Result(s). Where their respective contributions to the generation of the joint Result(s) cannot be ascertained, such joint Result(s) shall be owned by the Parties in equal shares. The Parties shall then establish a written separate joint ownership agreement regarding the allocation of ownership and terms of exercising, protecting, the division of related costs and exploiting such jointly owned invention (hereinafter “Invention”Result(s) on a case by case basis. The Parties shall use their best efforts to conclude such agreement within a six month period as from the date of the generation of such Result(s), as well as in . In the event that the Parties fail to enter into a joint ownership agreement within the time period set out above and to all patent applications and patents thereon in all countries, subject to the following: a. each Party shall be free to license, make, have made or use its undivided interest in Inventions provided that a Party engaged in any subsequent entry into such activity shall first obtain the consent of the other Party hereto (the “non-using Party”), which consent may be withheld in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage to the non-using Party, and, where consent is given, shall account to the non-using Party for income derived from such activities upon terms and conditions to be agreed between the Parties prior to the commencement of such activities, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest in Inventions to a third party without first providing the other Party to such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained in a bona fide offer from a third party; c. each Party shall obtain the consent of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally ownership agreement by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting each Party shall be entitled to license use the Invention from jointly owned Result(s) and to grant non-exclusive licenses on the Filing jointly owned Result(s) to third parties, without any right to sub-license, subject to the following conditions: - at least 45 days prior notice must be given to the other Party; and - fair and reasonable compensation must be provided to the other Party, unless otherwise agreed upon in writing between the Parties; and - granting of Access Rights to third parties does not unfairly prejudice the other Party’s rights in the Result(s). Notwithstanding the foregoing, prior notice and fair and reasonable compensation does not have to be provided to the other Party in consideration the event joint Result(s) is used (or Access Rights granted) for royalties to research, teaching purposes, provided such Access Rights shall at all times be mutually agreed upongranted on a royalty-free basis. The Parties shall agree on all protection measures – if any – and the division of related cost – if any – in advance.

Appears in 1 contract

Samples: Consortium Agreement

Joint Ownership. Each Party RESTRICTION ON SALE. MicroStrategy and EA shall have an equal undivided jointly own all right, title and interest worldwide in and to each jointly the Developed Products including, without limitation, patents, copyrights, trade secrets and any other Intellectual Property Rights (including trademarks and trade names related to the Developed Products, but excluding any trademarks and trade names owned invention (hereinafter “Invention”)individually by either party) incorporated in the Developed Products, as well as whether in and to all patent applications and patents thereon in all countriesthe United States or abroad, which ownership rights shall be subject to the following: a. each Party restrictions set forth in Sections 4.7, 4.8 and elsewhere in this Agreement. EA acknowledges that MicroStrategy has not filed any patent applications nor obtained any issued patents on the Developed Products as of the Effective Date. It is the intention of the parties that all the Intellectual Property Rights (including any related trademarks and trade names, but excluding those owned individually by either party) in the Developed Products shall be free jointly owned without any duty to license, make, have made account (except in the event of infringement as provided in Section 4.12 or share any royalties (except as provided in Section 11.1) based on the licensing or use of the Developed Products by the other party. Notwithstanding the foregoing and except pursuant to Section 10.3, during the period of time that the Business Unit obligations are continuing hereunder and for a period of six (6) months thereafter (the "Lockup Period"), neither party may sell, assign, transfer or encumber its undivided ownership interest in Inventions the Developed Products (a "Transfer of Ownership") without the other party's prior written consent, which may be granted or withheld in such party's sole discretion. After the Lockup Period, either party shall have the right to engage in a Transfer of Ownership, provided that such transfer shall shall be a Party engaged in any such activity shall first obtain the consent transfer of the other Party hereto transferring party's joint ownership interest in the Developed Products only (subject to the “non-using Party”restrictions set forth in this Agreement), which consent may be withheld in and shall not entail a transfer or assignment of any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage to the non-using Party, and, where consent is given, shall account to the non-using Party for income derived from such activities upon terms and conditions to be agreed between the Parties prior to the commencement of such activities, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest in Inventions to a third party without first providing the other Party to such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained in a bona fide offer from a third party; c. each Party shall obtain the consent of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents license or other assistance that may be necessary for the filing and prosecution rights granted by MicroStrategy pursuant to this Agreement or of each patent application based on an Invention. The expense any obligations of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be entitled to license the Invention from the Filing Party in consideration for royalties to be mutually agreed uponMicroStrategy hereunder.

Appears in 1 contract

Samples: Software Development and Oem Agreement (Exchange Applications Inc)

Joint Ownership. Each Subject to the remaining provisions of this Section 3.3, the Parties shall jointly own all right, title and interest in and to all Joint Intellectual Property to the extent such Intellectual Property is not Commissioned Intellectual Property. Subject to the terms of this Agreement, each Party shall have an equal equal, undivided interest in and to each jointly owned invention any such Joint Intellectual Property (hereinafter “Invention”including any patent issuing thereon), as well as and shall be free to practice and license such Joint Intellectual Property for any purpose, without accounting, notice or payment to the other Party unless otherwise agreed by both Parties. To the extent such Intellectual Property Rights do not vest in the appropriate Party, each Party agrees to Assign and hereby Assigns to all the appropriate Party rights in such Joint Intellectual Property consistent with the provisions hereof. To the extent any Joint Intellectual Property shall be deemed to constitute the Proprietary Information of each of the Parties, each Party may disclose Joint Intellectual Property only (i) under conditions of confidentiality reasonably sufficient to preserve any trade secret status available with respect thereto, (ii) where the disclosure will be useful or necessary to the procurement of patent rights, or (iii) in accordance with permitted disclosures under Article 13; and neither Party shall be obligated under Article 13 to destroy originals or copies of Joint Intellectual Property. The Parties shall mutually agree on whether or not to file a patent application claiming Joint Intellectual Property in any jurisdiction, including the timing of filing such patent applications, countries in which such patent applications are filed, and which Party should prosecute such patent application. The non-prosecuting Party will assist and cooperate with the prosecuting Party wherever and whenever reasonably necessary. Expenses incurred in connection with prosecution and maintenance of such patent applications and patents issuing thereon in all countries, subject to the following: a. each Party shall be free to license, make, have made shared equally or use its undivided interest in Inventions provided that a as otherwise agreed by the Parties; all invoices for sharing such expenses shall be invoiced by the prosecuting Party engaged in any such activity shall first obtain the consent of the other Party hereto (the “non-using Party”), which consent may be withheld in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage to the non-using Partyprosecuting Party within six (6) months of incurring the relevant expense, and, where consent is given, and shall account to be payable by the non-using prosecuting Party for income derived from within thirty (30) days of receipt of such activities upon terms and conditions invoice; failure by the prosecuting Party to invoice the non-prosecuting Party within such six (6) month period shall constitute a waiver of the right to be agreed between reimbursed for such expense sharing, and the Parties prior non-prosecuting Party's failure to pay any such non-invoiced expenses shall not constitute a breach of this Agreement. If a Party elects not to share such expenses with respect to any jurisdiction, or otherwise desires to discontinue prosecution or maintenance in any jurisdiction or ceases assisting and cooperating with the prosecuting Party, such Party shall Assign its rights with respect to such jurisdiction to the commencement other Party. In the event of such activitiesassignment, or so soon thereafter as is reasonably possible; b. neither the assigning Party shall sell its undivided interest have a nonexclusive, non-transferable, royalty-free, paid up license to practice the Joint Intellectual Property under any patent that may issue thereunder. Except as against the United States directly or indirectly (pursuant to 28 U.S.C.§ 1498), in Inventions to the event of infringement by a third party without first providing Third Party of Intellectual Property Rights in Joint Intellectual Property, either Party may assert such Intellectual Property Right and initiate an action for infringement, provided, however, that the other Party is given an opportunity in advance to join in the action and to share equally in the expenses and recoveries. If a Party does not share in the expenses related to an action for infringement, such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained in a bona fide offer from a third party; c. each Party shall obtain the consent of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld share in any circumstance where disclosure recovery. Each Party agrees to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with cooperate and assist the other Party in any patent application(s) for any infringement action of such Invention, then at the earliest practicable time, the Forfeiting Party shall notify Intellectual Property Rights in Joint Intellectual property brought by the other Party of its decision. In so doingin accordance with this provision, including joining the Forfeiting Party shall also forfeit action to the extent necessary to permit the other Party which actually files such patent application(s) (“Filing Party”) its share of to maintain the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be entitled to license the Invention from the Filing Party in consideration for royalties to be mutually agreed uponsuit.

Appears in 1 contract

Samples: Strategic Cooperation Agreement (Terran Orbital Corp)

Joint Ownership. Each Party (a) The parties shall have an equal undivided interest jointly own any Inventions that are conceived jointly by Medarex and IDM or their agents, contractors or collaborators during and in the course of developing the Antibody and to the Cell-based Vaccines (each jointly owned invention (hereinafter a Joint Invention”), as well as in and to all patent applications and patents thereon in all countries, subject claiming Joint Inventions (“Joint Patents”). The Parties shall cooperate to the following: a. each Party shall be free to license, make, have made ensure that any patent applications filed for Sole Inventions of one party do not claim any Joint Inventions or use its undivided interest in Sole Inventions provided that a Party engaged in any such activity shall first obtain the consent of the other Party hereto party, and that any patent applications filed for Joint Inventions do not claim any Sole Inventions of the parties. (b) In the “nonevent that either party believes that any Invention that is made in the course of performance under this Agreement may be a Joint Invention, such party shall so notify the Steering Committee. The Steering Committee shall thereafter meet in good faith to determine whether such Invention is a Joint Invention. In the event the Steering Committee is unable to make such determination, each party shall designate an experienced intellectual property attorney (in the case of determining inventorship of a possibly patentable invention, a registered United States patent attorney). Such attorneys shall cooperate in good faith to resolve any such inventorship issues, applying prevailing United States law, rules and interpretations for determining inventorship and ownership. (c) IDM shall have the right to grant licenses to its rights and interest in any Joint Patents as may be appropriate for the research, development and commercialization of the Cell-using Party”based Vaccine, without consent of or obligation to account to Medarex. Medarex shall have the right to grant licenses to its rights and interest in any Joint Patents as may be appropriate for the research, development and commercialization of the Antibody, without consent of or obligation to account to IDM. Except as expressly provided in this subsection 7.3(c), which consent may be withheld neither party shall grant a license to its rights and interest in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage Joint Patents to the non-using Party, and, where consent is given, shall account to the non-using Party for income derived from such activities upon terms and conditions to be agreed between the Parties prior to the commencement of such activities, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest in Inventions to a any third party without first providing the other Party to such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained in a bona fide offer from a third party; c. each Party shall obtain the consent of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the express written consent of the other Party prior to making such disclosure party, which consent may shall not be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be entitled to license the Invention from the Filing Party in consideration for royalties to be mutually agreed uponunreasonably withheld.

Appears in 1 contract

Samples: Development Collaboration and Supply Agreement (Idm Pharma, Inc.)

Joint Ownership. Each Party shall Except as set forth in this Section 6.4, the --------------- parties intend that each party hereto will have an equal and undivided one-half (1/2) joint ownership interest in the Developed Software and all Intellectual Property Rights related thereto. Each party shall have the right to each use and exploit such jointly owned invention (hereinafter “Invention”), as well as in and to all patent applications and patents thereon in all countries, Developed Software subject to the following: a. provisions of Section 4 and subject to each Party party's obligation to keep the source code of such jointly owned Developed Software confidential according to the terms of Section 10. Neither party shall be free have any duty of accounting to licensethe other party with respect to such joint ownership interest. Notwithstanding the foregoing provisions of this Section 6.4, the parties further agree that with respect to any current or future patents on inventions which are embodied in the Developed Software or portions thereof for which NTI personnel are the sole inventors or for which Cadence personnel are the sole inventors, then NTI or Cadence, as the case may be, shall retain sole ownership of and shall have the exclusive right to apply for and register such patents. Each party hereby grants to the other party a nonexclusive, nontransferable (except as set forth in Section 16) license under such patents to make, have made or use its undivided interest made, use, sell, offer for sale and import the Developed Software solely as permitted under this Section 6.4 and subject to the restrictions set forth in Inventions this Section 6.4 with respect to the Developed Software, including the right to grant sublicenses under such patents within the scope of such party's rights with respect to the Developed Software hereunder, provided that such patent sublicenses may only be granted in conjunction with a Party engaged in any such activity sublicense to the Developed Software and shall first obtain the consent be of the other Party hereto (same scope as the “non-using Party”), which consent may be withheld in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage sublicense to the non-using Party, and, where consent is given, shall account to the non-using Party for income derived from such activities upon terms and conditions to be agreed between the Parties prior to the commencement of such activities, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest in Inventions to a third Developed Software. Each party without first providing will give the other Party to such Invention with a party reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained prior notice in a bona fide offer from a third party; c. each Party shall obtain the consent writing of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed based upon the Developed Software for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any which such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which party believes it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be is entitled to license exclusive ownership under this Section 6.4(a); the Invention from the Filing Party parties will attempt to resolve any disputes regarding such claims of exclusive ownership in consideration for royalties to be mutually agreed uponaccordance with Section 13.

Appears in 1 contract

Samples: Software Development and License Agreement (Numerical Technologies Inc)

Joint Ownership. Each Subject to the remaining provisions of this Section 3.3, the Parties shall jointly own all right, title and interest in and to all Joint Intellectual Property to the extent such Intellectual Property is not Commissioned Intellectual Property. Subject to the terms of this Agreement, each Party shall have an equal equal, undivided interest in and to each jointly owned invention any such Joint Intellectual Property (hereinafter “Invention”including any patent issuing thereon), as well as and shall be free to practice and license such Joint Intellectual Property for any purpose, without accounting, notice or payment to the other Party unless otherwise agreed by both Parties. To the extent such Intellectual Property Rights do not vest in the appropriate Party, each Party agrees to Assign and hereby Assigns to all the appropriate Party rights in such Joint Intellectual Property consistent with the provisions hereof. To the extent any Joint Intellectual Property shall be deemed to constitute the Proprietary Information of each of the Parties, each Party may disclose Joint Intellectual Property only (i) under conditions of confidentiality reasonably sufficient to preserve any trade secret status available with respect thereto, (ii) where the disclosure will be useful or necessary to the procurement of patent rights, or (iii) in accordance with permitted disclosures under Article 13; and neither Party shall be obligated under Article 13 to destroy originals or copies of Joint Intellectual Property. The Parties shall mutually agree on whether or not to file a patent application claiming Joint Intellectual Property in any jurisdiction, including the timing of filing such patent applications, countries in which such patent applications are filed, and which Party should prosecute such patent application. The non-prosecuting Party will assist and cooperate with the prosecuting Party wherever and whenever reasonably necessary. Expenses incurred in connection with prosecution and maintenance of such patent applications and patents issuing thereon in all countries, subject to the following: a. each Party shall be free to license, make, have made shared equally or use its undivided interest in Inventions provided that a as otherwise agreed by the Parties; all invoices for sharing such expenses shall be invoiced by the prosecuting Party engaged in any such activity shall first obtain the consent of the other Party hereto (the “non-using Party”), which consent may be withheld in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage to the non-using Partyprosecuting Party within six (6) months of incurring the relevant expense, and, where consent is given, and shall account to be payable by the non-using prosecuting Party for income derived from within thirty (30) days of receipt of such activities upon terms and conditions invoice; failure by the prosecuting Party to invoice the non-prosecuting Parry within such six (6) month period shall constitute a waiver of the right to be agreed between reimbursed for such expense sharing, and the Parties prior non-prosecuting Party's failure to pay any such non-invoiced expenses shall not constitute a breach of this Agreement. If a Party elects not to share such expenses with respect to any jurisdiction, or otherwise desires to discontinue prosecution or maintenance in any jurisdiction or ceases assisting and cooperating with the prosecuting Party, such Party shall Assign its rights with respect to such jurisdiction to the commencement other Party. In the event of such activitiesassignment, or so soon thereafter as is reasonably possible; b. neither the assigning Party shall sell its undivided interest have a nonexclusive, non-transferable, royalty-free, paid up license to practice the Joint Intellectual Property under any patent that may issue thereunder. Except as against the United States directly or indirectly (pursuant to 28 U.S.C.§ 1498), in Inventions to the event of infringement by a third party without first providing Third Party of Intellectual Property Rights in Joint Intellectual Property, either Party may assert such Intellectual Property Right and initiate an action for infringement, provided, however, that the other Party is given an opportunity in advance to join in the action and to share equally in the expenses and recoveries. If a Party does not share in the expenses related to an action for infringement, such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained in a bona fide offer from a third party; c. each Party shall obtain the consent of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld share in any circumstance where disclosure recovery. Each Party agrees to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with cooperate and assist the other Party in any patent application(s) for any infringement action of such Invention, then at the earliest practicable time, the Forfeiting Party shall notify Intellectual Property Rights in Joint Intellectual property brought by the other Party of its decision. In so doingin accordance with this provision, including joining the Forfeiting Party shall also forfeit action to the extent necessary to permit the other Party which actually files such patent application(s) (“Filing Party”) its share of to maintain the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be entitled to license the Invention from the Filing Party in consideration for royalties to be mutually agreed uponsuit.

Appears in 1 contract

Samples: Strategic Cooperation Agreement (Tailwind Two Acquisition Corp.)

AutoNDA by SimpleDocs

Joint Ownership. Each Party shall have an equal undivided interest in Subject to Section 7.1.1, and to each jointly owned invention (hereinafter “Invention”), as well as in and to all patent applications and patents thereon in all countries, subject to the following: a. rights and licenses granted herein and in the other Commercial Alliance Agreements, MBX and ADM Sub shall jointly own all Joint Alliance Technology. ADM Sub hereby grants to MBX a perpetual, royalty-free, fully-sublicenseable license to ADM Sub's rights in Joint Alliance Technology for the research, development, manufacture, use, sale and importation of PHA-Related Material produced via Plants. MBX hereby grants to ADM Sub a perpetual, royalty-free, exclusive, fully-sublicenseable license to MBX's rights in Joint Alliance Technology for use in all fields that are part of ADM's and its Affiliates' commercial activities at any time during the Term of the Commercial Alliance, but excluding: (i) uses that are within the Field, (ii) uses that are within the term "Field of Use" as that term is defined in the License Agreement by and between MBX and Tepha, Inc. dated October 1, 1999, as amended on December 17, 2002 and (iii) any and all uses of PHA-Related Material produced via Plants. Subject to the rights and licenses granted herein and in the other Commercial Alliance Agreements, MBX and ADM Sub hereby agree that they shall each Party shall be free have the right to licenseassign, makesell, have made license or use its undivided interest otherwise convey their rights in Inventions provided that a Party engaged in any such activity shall first obtain the Joint Alliance Technology without notice to or consent of the other Party hereto (and without any obligation to share the “non-using Party”), which consent may be withheld in any circumstance where proceeds of such license, making, having made or use would, in activity with the reasonable opinion of the non-using other Party, result in substantial commercial disadvantage or otherwise to the non-using Party, and, where consent is given, shall account to the non-using other * CONFIDENTIAL TREATMENT REQUESTED Party for income derived from in connection with such activities upon terms and conditions to be agreed between activities. In all other respects, the rights of the Parties prior as joint owners shall be determined by the laws of the United States of America and the State of Delaware. Trademarks that are developed by or on behalf of the Joint Sales Company for use in connection with the marketing and sale of PHA Material or PHA Formulations during the Term shall be included within the Joint Alliance Technology and the Parties agree and covenant not to the commencement use any such trademarks, or other trademarks licensed hereunder, in a manner that would cause a diminution in value of such activitiestrademarks, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest including without limitation, by using such trademarks in Inventions to a third party without first providing the connection with other Party to goods, by using such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained trademarks in a bona fide offer from a third party; c. each Party shall obtain the consent of the other Party prior misleading or confusing manner or by using any trademarks that are confusingly similar to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be entitled to license the Invention from the Filing Party in consideration for royalties to be mutually agreed upontrademark.

Appears in 1 contract

Samples: Commercial Alliance Agreement (Metabolix Inc)

Joint Ownership. The Parties shall be the joint owners of all rights, title and interests in and to any Know-How (whether or not patentable) and Patents Covering such Know-How first invented, discovered, created or developed either (a) at any time during the Term by or on behalf of ITEOS or any of its Affiliates or Third Parties acting on behalf of ITEOS on the one hand and by or on behalf of GSK or any of its Affiliates or Third Parties acting on behalf of GSK on the other hand and (b) regardless of inventorship, in the performance of activities by or on behalf of either Party, or the Parties jointly, under this Agreement at any time during the Term that relates to a Combination Product (including Co-Formulated Products) or a Co-Administration Therapy, except for Know-How and Patents described in clause (b) of Section 11.1.3 (Ownership by GSK), which shall be solely owned by GSK as GSK Arising Technology as provided under Section 11.1.3 (Ownership by GSK) (such Know-How, “Joint Arising Know-How,” such Patents, “Joint Arising Patents,” and collectively, the “Joint Arising Technology”), subject to any rights or licenses that are expressly granted by one Party to the other Party under this Agreement. Each Party shall have will and hereby does assign to the other Party, without additional consideration, an equal equal, undivided interest in and to each jointly owned invention (hereinafter “Invention”)all of its rights, as well as title and interests in and to all patent applications such Joint Arising Technology, and patents thereon in all countries, subject such other Party hereby accepts such assignment. Except to the following: a. each extent either Party shall be free is restricted by the licenses granted by one Party to license, make, have made or use its undivided interest in Inventions provided that a Party engaged in any such activity shall first obtain the consent of the other Party hereto (the “non-using Party”), which consent may be withheld in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage pursuant to the non-using Party, and, where consent is given, shall account to the non-using Party for income derived from such activities upon terms and conditions to be agreed between the Parties prior to the commencement of such activitiesthis Agreement, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest in Inventions to a third party without first providing the other Party to such Invention with a reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those covenants contained in a bona fide offer from a third party; c. herein, each Party shall obtain the consent of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be entitled to practice and license the Invention from Joint Arising Technology without restriction and without consent of, or (subject to the Filing financial provisions of this Agreement) an obligation to account to the other Party in consideration for royalties (and to be mutually agreed uponthe extent necessary by way of Applicable Laws of any jurisdiction regarding joint ownership of intellectual property rights, each Party grants the other Party the right and license to do the same), and each Party hereby waives any right it may have under Applicable Laws to require any such consent or accounting.

Appears in 1 contract

Samples: Collaboration and License Agreement (iTeos Therapeutics, Inc.)

Joint Ownership. Each Party shall Except as set forth in this Section 6.4, the --------------- parties intend that each party hereto will have an equal and undivided one-half (1/2) joint ownership interest in the Developed Software and all Intellectual Property Rights related thereto. Each party shall have the right to each use and exploit such jointly owned invention (hereinafter “Invention”), as well as in and to all patent applications and patents thereon in all countries, Developed Software subject to the following: a. provisions of Section 4 and subject to each Party party's obligation to keep the source code of such jointly owned Developed Software confidential according to the terms of Section 10. Neither party shall be free have any duty of accounting to licensethe other party with respect to such joint ownership interest. Notwithstanding the foregoing provisions of this Section 6.4, the parties further agree that with respect to any current or future patents on inventions which are embodied in the Developed Software or portions thereof for which NTI personnel are the sole inventors or for which Cadence personnel are the sole inventors, then NTI or Cadence, as the case may be, shall retain sole ownership of and shall have the exclusive right to apply for and register such patents. Each party hereby grants to the other party a nonexclusive, nontransferable (except as set forth in Section 16) license under such patents to make, have made or use its undivided interest made, use, sell, offer for sale and import the Developed Software solely as permitted under this Section 6.4 and subject to the restrictions set forth in Inventions this Section 6.4 with respect to the Developed Software, including the right to grant sublicenses under such patents within the scope of such party's [***]=CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. rights with respect to the Developed Software hereunder, provided that such patent sublicenses may only be granted in conjunction with a Party engaged in any such activity sublicense to the Developed Software and shall first obtain the consent be of the other Party hereto (same scope as the “non-using Party”), which consent may be withheld in any circumstance where such license, making, having made or use would, in the reasonable opinion of the non-using Party, result in substantial commercial disadvantage sublicense to the non-using Party, and, where consent is given, shall account to the non-using Party for income derived from such activities upon terms and conditions to be agreed between the Parties prior to the commencement of such activities, or so soon thereafter as is reasonably possible; b. neither Party shall sell its undivided interest in Inventions to a third Developed Software. Each party without first providing will give the other Party to such Invention with a party reasonable opportunity to purchase such undivided interest upon terms and conditions no less favorable than those contained prior notice in a bona fide offer from a third party; c. each Party shall obtain the consent writing of the other Party prior to disclosing Inventions to a third party. The Parties acknowledge and agree that some, if not all, of the acts identified in subsections (a) and (b) above will inherently require the disclosure of Inventions to a third party, and each Party shall obtain the written consent of the other Party prior to making such disclosure which consent may be withheld in any circumstance where disclosure to such third party would, in the reasonable opinion of the non-disclosing Party, result in substantial commercial disadvantage to the non-disclosing Party; and d. the Parties shall mutually elect when patent applications shall be filed based upon the Developed Software for Inventions. If either Party (“Forfeiting Party”) shall elect not to join with the other Party in any patent application(s) for any which such Invention, then at the earliest practicable time, the Forfeiting Party shall notify the other Party of its decision. In so doing, the Forfeiting Party shall also forfeit to the Party which actually files such patent application(s) (“Filing Party”) its share of the title to the Joint Invention and any joint patent based thereon. The Forfeiting Party shall also furnish the Filing Party all documents or other assistance that may be necessary for the filing and prosecution of each patent application based on an Invention. The expense of preparing, filing and prosecuting each patent application based on an Invention, and for the issuance and maintenance of the respective joint patents, shall be borne equally by the Parties, except that a Forfeiting Party shall only equally bear such maintenance expense of the joint patents to which party believes it has not forfeited title. Subject to any prior distribution of patent rights to any third parties by the Filing Party, the Forfeiting Party shall be is entitled to license exclusive ownership under this Section 6.4(a); the Invention from the Filing Party parties will attempt to resolve any disputes regarding such claims of exclusive ownership in consideration for royalties to be mutually agreed uponaccordance with Section 13.

Appears in 1 contract

Samples: Software Development and License Agreement (Numerical Technologies Inc)

Draft better contracts in just 5 minutes Get the weekly Law Insider newsletter packed with expert videos, webinars, ebooks, and more!