Common use of Ownership of Inventions and Patents Clause in Contracts

Ownership of Inventions and Patents. 8.1.1 Title to inventions, discoveries, improvements and other technology, whether or not patentable, conceived, made or reduced to practice in the performance of the Research Program under this Agreement (collectively, the “Program Inventions”) and any Patents claiming such Program Inventions (“Program Patents”), are retained by the Party that is the employer of the inventor(s) (or, in the case of consultants and (sub)contractors, the Party for which the consultant or (sub)contractor is providing its services). Each Party will ensure that every employee, consultant, and (sub)contractor employed or contracted by that Party in the performance of the Research Program has a written obligation to assign all Know-How and Patents conceived, made or reduced to practice by each such employee, consultant, and (sub)contractor to such Party. The Parties agree that the United States federal patent law on inventorship will determine the inventorship of any Program Invention and the names of the inventors on any Program Patent filings, whether sole or joint inventions, which arise in connection with activities conducted pursuant to this Agreement. Sanofi will own Program Inventions invented solely by employees, consultants and/or (sub)contractors of Sanofi (the “Sanofi Inventions”) and any Patents claiming such Program Inventions (the “Sanofi Program Patents”). Regulus will own Program Inventions invented solely by employees, consultants and/or (sub)contractors of Regulus (the “Regulus Inventions”) and any Patents claiming such Program Inventions (the “Regulus Program Patents”). Regulus and Sanofi will own jointly such Program Inventions invented jointly by employees, consultants and/or (sub)contractors of Regulus and Sanofi (the “Joint Inventions”) and any Patents claiming such Program Inventions (the “Joint Patents”). Regulus will promptly disclose to Sanofi any such Regulus Invention or Joint Invention, and Sanofi will promptly disclose to Regulus any Sanofi Invention or Joint Invention, arising from or made in the performance of the Research Program and any patent or patent application claiming such Program Invention. It is understood that except as otherwise provided in this Agreement or as the Parties may otherwise agree in writing, neither Party will have any obligation to account to the other Party for profits, or to obtain any approval of the other Party to license, assign, mortgage or exploit a Joint Invention by reason of joint ownership of any such Joint Invention, and may otherwise undertake all activities a sole owner might undertake with respect to such inventions without the consent of and without accounting to the other joint owner, and each Party hereby waives any right it may have under the laws of any jurisdiction to require such consent or accounting.

Appears in 2 contracts

Samples: Collaboration and License Agreement (Regulus Therapeutics Inc.), Collaboration and License Agreement (Isis Pharmaceuticals Inc)

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Ownership of Inventions and Patents. 8.1.1 (a) Title to inventions, discoveries, improvements and other technology, whether or not patentable, conceived, made or reduced to practice in the performance of the Research Program and Development Program under this Agreement (collectively, the “Program Inventions”) and any Patents claiming such Program Inventions (“Program Patents”), are retained by the Party that is the employer of the inventor(s) inventor (or, in the case of consultants and (sub)contractors, the Party for which the consultant or (sub)contractor is providing its services). Each Party will ensure that every employee, consultant, and (sub)contractor employed or contracted by that Party in the performance of the Research Program has a written obligation to assign all Know-How and Patents conceived, made or reduced to practice by each such employee, consultant, and (sub)contractor to such Party. The Parties agree that the United States federal patent law on inventorship will determine the inventorship of any Program Invention invention and the names of the inventors on any Program Patent patent filings, whether sole or joint inventions, which arise in connection with activities conducted pursuant to this Agreement. Sanofi OMI will own Program Inventions Inventions, including those inventions described in Section 4.7.1, invented solely by employees, consultants and/or (sub)contractors of Sanofi OMI (the “Sanofi OMI Inventions”) and any Patents claiming such Program Inventions (the “Sanofi OMI Program Patents”). Regulus Isis will own Program Inventions Inventions, including those inventions described in Section 4.7.2, invented solely by employees, consultants and/or (sub)contractors of Regulus Isis (the “Regulus Isis Inventions”) and any Patents claiming such Program Inventions (the “Regulus Isis Program Patents”). Regulus Isis and Sanofi OMI will own jointly such Program Inventions Inventions, including those inventions described in Section 4.7.3, invented jointly by employees, consultants and/or (sub)contractors of Regulus Isis and Sanofi OMI (the “Joint Inventions”) and any Patents claiming such Program Inventions (the “Joint Patents”). Regulus Isis will promptly disclose to Sanofi OMI any such Regulus Isis Invention or Joint Invention, and Sanofi OMI will promptly disclose to Regulus Isis any Sanofi OMI Invention or Joint Invention, arising from or made in the performance of the Research Program and any patent or patent application claiming such Program Invention. It is . (b) This Agreement will be understood that except as otherwise provided to be a joint research agreement to discover Compounds and associated uses and to Develop Products in this Agreement or as the Parties may otherwise agree in writing, neither Party will have any obligation to account to the other Party for profits, or to obtain any approval of the other Party to license, assign, mortgage or exploit a Joint Invention by reason of joint ownership of any such Joint Invention, and may otherwise undertake all activities a sole owner might undertake accordance with respect to such inventions without the consent of and without accounting to the other joint owner, and each Party hereby waives any right it may have under the laws of any jurisdiction to require such consent or accounting35 U.S.C. § 103(c)(3).

Appears in 1 contract

Samples: Collaboration and License Agreement (Isis Pharmaceuticals Inc)

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Ownership of Inventions and Patents. 8.1.1 Title (a) Except as set forth in Section 2.1 above, title to inventions, discoveries, improvements and other technology, whether or not patentable, conceived, made or reduced to practice in the performance of the Research Program under this Agreement (collectively, the “Program Inventions”) and any Patents claiming such Program Inventions (“Program Patents”), are retained by the Party that is the employer of the inventor(s) inventor (or, in the case of consultants and (sub)contractors, the Party for which the consultant or (sub)contractor is providing its services). Each Party will ensure that every employee, consultant, and (sub)contractor employed or contracted by that Party in the performance of the Research Program has a written obligation to assign all Know-How and Patents conceived, made or reduced to practice by each such employee, consultant, and (sub)contractor to such Party. The Parties agree that the United States federal patent law on inventorship will shall determine the inventorship of any Program Invention invention and the names of the inventors on any Program Patent patent filings, whether sole or joint inventions, which arise in connection with activities conducted pursuant to this Agreement. Sanofi will BMS shall own Program Inventions invented solely by employees, consultants and/or (sub)contractors of Sanofi BMS (the “Sanofi BMS Inventions”) and any Patents claiming such Program Inventions (the “Sanofi BMS Program Patents”). Regulus will Subject to Section 2.1, Pharmacopeia shall own Program Inventions invented solely by employees, consultants and/or (sub)contractors of Regulus Pharmacopeia, including the Pharmacopeia Research Personnel (the “Regulus Pharmacopeia Inventions”) and any Patents claiming such Program Inventions (the “Regulus Pharmacopeia Program Patents”). Regulus Subject to Section 2.1 Pharmacopeia and Sanofi will BMS shall own jointly such Program Inventions invented jointly by employees, consultants and/or (sub)contractors of Regulus Pharmacopeia and Sanofi BMS (the “Joint Inventions”) and any Patents claiming such jointly invented Program Inventions (the “Joint Patents”). Regulus will Pharmacopeia shall promptly disclose to Sanofi BMS any such Regulus Pharmacopeia Invention or Joint Invention, and Sanofi will promptly disclose to Regulus any Sanofi Invention or Joint Invention, arising from or made in the performance of the Research Program and any patent or patent application claiming such Program Invention. It is . (b) This Agreement shall be understood that except as otherwise provided to be a joint research agreement to discover Research Compounds and associated uses in this Agreement accordance with 35 U.S.C. § 103(c)(3). (c) Each Party has entered or as will enter into binding agreements obligating all employees, consultants and/or (sub)contractors performing activities in the Parties may otherwise agree performance of the Research Program to assign (or, in writingthe case of (sub)contractors, neither Party will have assign or license) the employee’s, consultant’s and/or (sub)contractor’s interest in any obligation invention and related intellectual property conceived or reduced to account practice in the course of such activities to the other Party for profitswhich such employee, or to obtain any approval of the other Party to license, assign, mortgage or exploit a Joint Invention by reason of joint ownership of any such Joint Invention, and may otherwise undertake all activities a sole owner might undertake with respect to such inventions without the consent of and without accounting to the other joint owner, and each Party hereby waives any right it may have under the laws of any jurisdiction to require such consent or accountingconsultant and/or (sub)contractor is providing its services.

Appears in 1 contract

Samples: Discovery Collaboration Agreement (Pharmacopeia Inc)

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