Ownership of Inventions. 10.2.1 Reata will retain ownership of all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1. 10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder. 10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 3 contracts
Samples: Exclusive License and Supply Agreement (Reata Pharmaceuticals Inc), Exclusive License and Supply Agreement (Reata Pharmaceuticals Inc), Exclusive License and Supply Agreement (Reata Pharmaceuticals Inc)
Ownership of Inventions. 10.2.1 Reata will retain ownership Subject to the rights and licenses granted herein, all right, title and interest in and to all inventions and other intellectual property made solely by personnel of all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance a party hereto in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoingperformance of such party's obligations hereunder shall be owned solely by such party (a "Sole Invention"). Likewise, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject subject to the rights and licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubtherein, all Reata Inventions right, title and interest in and to all inventions and other intellectual property made jointly by personnel of AngioSense and Bioject (including Reata’s rights to any jointly-owned Inventionsa "Joint Invention") shall be included within assigned to AngioSense; provided, however, that AngioSense hereby grants to Bioject a royalty-free exclusive worldwide license (with the Licensed Technology hereunder right to sublicense) under such Joint Invention to develop, make, have made, use, import, distribute, and sell products in all areas outside the Field and outside the licensed portions of the Extended Field. Each party shall promptly notify the other party in writing of any Joint Inventions. Bioject shall ensure all employees and consultants of Bioject, assist AngioSense in accomplishing the foregoing assignment. For any patent application covering an AngioSense Sole Invention having claims that include or reference to Kyowa Kirin under Section 2.1.
10.2.2 Subject to technology covered by any Bioject patent (now existing or issued during the terms and conditions term of this Agreement) related to jet injection, Kyowa Kirin hereby grants AngioSense will (a) advise Bioject of the filing of such patent application, and (b) if and when such patent application issues as a patent and that patent is licensed to Reata a third party, or the claimed subject matter thereof is otherwise commercialized, AngioSense will advise Bioject of the licensing or commercialization opportunity and its Affiliates negotiate with Bioject in good faith an arrangement to share revenues derived from such licensing or commercialization opportunity, based upon the relative contribution of the Bioject technology, as defined in the claims of such AngioSense Sole Invention patent, to the revenue opportunity. For any patent application covering a Bioject Sole Invention having claims that include or reference to technology covered by any AngioSense patent (now existing or issued during the term of this Agreement) related to the delivery of a drug or biologic agent to the cardiac or cardiovascular system via (i) a catheter or (ii) a non-exclusivecatheter based delivery method, royalty-free, sublicenseable Bioject will (except as provided belowa) license under advise AngioSense of the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, importfiling of such patent application, and export (b) if and when such patent application issues as a patent and that patent is licensed to have a third party, or the claimed subject matter thereof is otherwise commercialized, Bioject will advise AngioSense of the licensing or commercialization opportunity and negotiate with AngioSense in good faith an arrangement to share revenues derived from such actions taken on its behalf by agentslicensing or commercialization opportunity, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside based upon the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner relative contribution of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such PartyAngioSense technology, except where Applicable Law requires otherwise and except as defined in the case claims of governmentalsuch Bioject Sole Invention patent, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained)the revenue opportunity.
Appears in 2 contracts
Samples: Agreement I (Bioject Medical Technologies Inc), Agreement I (Bioject Medical Technologies Inc)
Ownership of Inventions. 10.2.1 Reata will retain ownership Ownership of all Reata Inventions Project Arising IP shall be as set forth in this Article 7. Determination of inventorship of Project Arising IP shall be made in accordance with US laws. Each Party shall continue to own any Patent Rights and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except Know-How that both Parties shall retain joint ownership of any Inventions that are conceived, made it owned prior to the Effective Date or generated jointly by both Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents created or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance obtained outside the Territoryscope of this Agreement, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the which it licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party under this Agreement. Notwithstanding anything in this Section 7.1 to the contrary, Zymeworks shall retain all rights in the Zymeworks Technology, the Zymeworks Background Technology and each Party hereby consents to such exploitation and licensing any Project Arising IP comprising improvements thereto (“Improvements”). For clarity, all antibody mutations created in the conduct of the other Party for jointly-Research Collaboration, including the Zymeworks Modifications and the Zymeworks Modified Scaffolds, shall comprise Improvements and shall be owned by Zymeworks. Except as otherwise provided in the foregoing sentence, Inventions within the Project Arising IP that are made solely by Zymeworks or its Affiliates or subcontractors (such Project Arising IP and any and all Improvements, the “Zymeworks Inventions. For ”), and all Intellectual Property rights in and to the avoidance of doubtZymeworks Inventions, all Reata Inventions including the Patent Rights claiming them (such Patent Rights, including Reata’s rights to any jointly-owned InventionsPatent Rights claiming Improvements, the “Zymeworks Project Patent Rights”)) shall be included owned solely by Zymeworks. Other than any such Inventions comprising Improvements, Inventions within the Licensed Technology hereunder Project Arising IP that are made solely by GSK or its Affiliates or subcontractors (“GSK Inventions”) and licensed to Kyowa Kirin under Section 2.1.
10.2.2 all Intellectual Property rights therein, including the Patent Rights claiming them (the “GSK Project Patent Rights”) shall be owned solely by GSK. Other than any such Inventions comprising Improvements, Joint Inventions (and the Joint Patent Rights) shall be owned jointly by the Parties. Subject to Article 2 and Article 11, each Party has the terms right to grant licenses under and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and otherwise exploit its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin interest in such Joint Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectlyJoint Patent Rights) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside without the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable licenseconsent of, or right to obtain such a licenseaccounting to, shall be obtained)the other Party.
Appears in 2 contracts
Samples: Collaboration and License Agreement (Zymeworks Inc.), Collaboration and License Agreement (Zymeworks Inc.)
Ownership of Inventions. 10.2.1 Reata will retain The following terms and conditions shall apply to the ownership of Inventions unless provided for otherwise in this Agreement: Each Party shall remain owner of its Patent Rights and Know-How. BPM shall solely own Inventions solely related to any improvements to the BPM Technology and all Reata Inventions Patent Rights and Kyowa Kirin shall retain ownership Know-How relating thereto (which will be treated as BPM Technology). Prior to exercise of an Option Right for each Collaboration Target by Roche, all Kyowa Kirin InventionsCollaboration Compounds and all Other Compounds for a given Collaboration Target or other Targets, except that both Parties shall retain joint ownership including their methods of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate with respect tomanufacture […***…] and use, and share all Patent Rights and Know-How relating thereto (including Collaboration Compound IP) shall be solely owned by BPM (with all of the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs foregoing that are not attributable “Collaboration Compounds” or “Collaboration Compound IP” referred to any particular territoryherein as “Other Compound IP”). In connection […***…] All Patent Rights and Know-How generated under this Agreement to the extent related to biomarkers or bioreagents, including their methods of manufacture and use, (the “Biomarker IP”) shall be owned jointly by the Parties (with US rules on joint ownership to apply worldwide). After exercise of an Option Right for each Collaboration Target by Roche, all Patent Rights and Know-How arising from the foregoingdevelopment or commercialization of Licensed Products, including their methods of manufacture and use, that is generated by (i) either Party individually shall be owned by such generating Party or (ii) both Parties jointly shall be owned jointly by the Parties (with US rules on joint ownership to apply worldwide). Subsequent to exercise of an Option Right for a given Collaboration Target, the Parties Roche Group shall agree upon a lead Party not generate additional compounds directed to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect theretoCollaboration Target under this Agreement. Subject to the licenses granted foregoing, all Patent Rights and Know-How generated under this Agreement to each Party hereunder in the extent related to Collaboration Targets, including their respective territoriesmethods of manufacture and use (other than Collaboration Compound IP, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights thereinBPM Technology, Other Compound IP, Biomarker IP or […***…]), without any obligation or requirement of an accounting shall be owned jointly by the Parties (with US rules on joint ownership to the other Party and each Party hereby consents to such exploitation and licensing of the other Party apply worldwide). Inventorship for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights Patent Rights and Know-How) first made during the course of the performance of activities under this Agreement will be determined in accordance with United States patent laws for determining inventorship. BPM and Roche each shall require all of its employees, consultants and contractors to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed assign all Inventions conceived by them to Kyowa Kirin under Section 2.1.
10.2.2 Subject Roche and/or BPM, to the terms and conditions of extent required by this Agreement. Except as specifically set forth herein, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license this Agreement shall not be sublicenseable construed, by Reata estoppel, implication or otherwise, as (directly i) giving any of the Parties any license, right, title, interest in or indirectly) ownership to any Confidential Information; (ii) granting any license or right under any Patent Rights or Know-How; or (iii) representing any commitment by either Party to enter into any additional agreement. Notwithstanding anything in this Agreement to the contrary, all in-licensed Patent Rights or Know-How Controlled by a Party hereto will be subject to the applicable Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunderagreement.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 2 contracts
Samples: Collaboration and License Agreement (Blueprint Medicines Corp), Collaboration and License Agreement (Blueprint Medicines Corp)
Ownership of Inventions. 10.2.1 Reata will retain (a) Subject to Section 9.1(b), ownership of all Reata Inventions shall be based on inventorship, as determined in accordance with the rules of inventorship under United States patent laws. All jointly owned Inventions shall be referred to as “Joint IP” and Kyowa Kirin each of ARES TRADING and Intrexon (the “Joint Owners”) shall retain ownership of all Kyowa Kirin Inventionsown an undivided half interest therein, except that both Parties shall retain joint ownership of any Inventions that are conceivedwith the right to practice, made or generated jointly by both Parties. The Parties shall reasonably cooperate with respect toexploit, and share grant licenses to such Joint IP, without a duty of accounting or an obligation to seek consent from the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved other Joint Owner (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject subject to the licenses granted to each the other Joint Owner and the payment obligations under this Agreement) but with the duty to inform the other Party hereunder about granted licenses. Know-How included in their respective territoriesJoint IP shall be referred to as “Joint Know-How” and Patent Rights included in Joint IP shall be referred to as “Joint Patents.”
(b) The Parties acknowledge and agree that Intrexon is and will be the sole and exclusive owner of all right, each Party title and interest in and to any Intrexon Platform Technology. Therefore, notwithstanding the foregoing in Section 9.1(a), all Inventions that are (i) methods of manufacture, use, delivery, or formulation of any Intrexon Activator Ligand (“Ligand Inventions”) and/or (ii) improvements of Intrexon Platform Technologies (“Platform Improvement Inventions”) shall have full rights be owned solely by Intrexon irrespective of inventorship, and ARES TRADING hereby assigns all of its right, title and interest in and to exploit and license such jointly-owned the Ligand Inventions (and any patent intellectual property rights therein)thereto or under) to Intrexon and agrees to execute such documents and perform such other acts as Intrexon may reasonably request to obtain, without any obligation or requirement of an accounting to the other Party perfect and each Party hereby consents enforce its rights to such exploitation Ligand Inventions and licensing of the other Party for jointly-owned Inventionsassignment thereof. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) The latter shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1as Intrexon Sole Patents.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 2 contracts
Samples: License and Collaboration Agreement (Ziopharm Oncology Inc), License and Collaboration Agreement (Intrexon Corp)
Ownership of Inventions. 10.2.1 Reata will retain ownership of all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions(i) All software innovations, except that both Parties shall retain joint ownership of computer programs, code, designs, artwork, notes, documents, information, materials, discoveries, inventions or other original work, including without limitation, any Inventions that are additions, m9onifications or enhancements, (collectively, the “Intellectual Property”) conceived, made discovered, created, authored, or generated jointly first actually reduced to tangible work product by both Parties. The Parties shall reasonably cooperate Subsidiary either alone or in collaboration with respect toothers, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of which relate in any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable manner to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject Subsidiary’s having access to the licenses granted to each Party hereunder in their respective territoriesCellular Technology or any Proprietary Information, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder sole property of Vringo and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable in joint work. Subsidiary and Vringo agree that any patents, trademarks or copyrights and any other rights and interest that may issue relating to any of the Intellectual Property produced by Reata Subsidiary employees or independent contractors while engaged in such development effort and resulting from Subsidiary’s having access to Proprietary Information shall be in the name of and assigned to Vringo, and Subsidiary further specifically agrees to assign (directly and does hereby assign) all its rights, title and interest to any and all such Intellectual Property to Vringo.
(ii) Vringo shall have the sole right to determine the method of protection for any such Intellectual Property, including the right to keep the same as trade secrets, to file and execute patent applications thereon, to use and disclose the same without prior patent application, to file registrations for copyright or indirectlytrademarks thereon in its own name or to follow any other procedures that Vringo deems appropriate.
(iii) Subsidiary agrees (i) to disclose promptly and to ensure that the Subsidiary employees or independent contractors engaged in such development effort disclose promptly in writing to Vringo all such Intellectual Property, and (ii) that Vringo has a power of attorney to apply for in Subsidiary’s name, and to execute any Third Party licensee applications and/or assignments reasonably necessary to obtain any patent, copyright, trademark or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities other statutory protection for such Party under this Agreement (Designs and Invention in Vringo’s name as Vringo deems appropriate. Subsidiary shall ensure that Subsidiary’s employees and independent contractors engaged in such development effort waive any and all claims to any right in Intellectual Property created by such employees or outside of this Agreement with respect to Reata’s development independent contractors, and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, Subsidiary shall be obtained)liable to Vringo for damages or losses arising out of Subsidiary’s failure to comply with this provision.
Appears in 2 contracts
Samples: Development Agreement, Development Agreement (Vringo Inc)
Ownership of Inventions. 10.2.1 Reata will retain (a) Subject to Section 9.1(b), ownership of all Reata Inventions shall be based on inventorship, as determined in accordance with the rules of inventorship under United States patent laws. All jointly owned Inventions shall be referred to as “Joint IP” and Kyowa Kirin each of ARES TRADING and Intrexon (the “Joint Owners”) shall retain ownership of all Kyowa Kirin Inventionsown an undivided half interest therein, except that both Parties shall retain joint ownership of any Inventions that are conceivedwith the right to practice, made or generated jointly by both Parties. The Parties shall reasonably cooperate with respect toexploit, and share grant licenses to such Joint IP, without a duty of accounting or an obligation to seek consent from the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved other Joint Owner (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject subject to the licenses granted to each the other Joint Owner and the payment obligations under this Agreement) but with the duty to inform the other Party hereunder about granted licenses. Know-How included in their respective territoriesJoint IP shall be referred to as “Joint Know-How” and Patent Rights included in Joint IP shall be referred to as “Joint Patents.”
(b) The Parties acknowledge and agree that Intrexon is and will be the sole and exclusive owner of all right, each Party title and interest in and to any Intrexon Platform Technology. Therefore, notwithstanding the foregoing in Section 9.1(a), all Inventions that are (i) methods of manufacture, use, delivery, or formulation of any Intrexon Activator Ligand (“Ligand Inventions”) and/or (ii) improvements of Intrexon Platform Technologies (“Platform Improvement Inventions”) shall have full rights be owned solely by Intrexon irrespective of inventorship, and ARES TRADING hereby assigns all of its right, title and interest in and to exploit and license such jointly-owned the Ligand Inventions (and any patent intellectual property rights therein)thereto or under) to Intrexon and agrees to execute such documents and perform such other acts as Intrexon may reasonably request to obtain, without any obligation or requirement of an accounting to the other Party perfect and each Party hereby consents enforce its rights to such exploitation Ligand Inventions and licensing of the other Party for jointly-owned Inventionsassignment thereof. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) The latter shall be included within hereunder as Intrexon Sole Patents. Portions herein identified by [*****] have been omitted pursuant to a request for confidential treatment under Rule 24b-2 of the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions Securities Exchange Act of 1934, as amended. A complete copy of this Agreement, Kyowa Kirin hereby grants to Reata document has been filed separately with the Securities and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunderExchange Commission.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 2 contracts
Samples: License and Collaboration Agreement, License and Collaboration Agreement
Ownership of Inventions. 10.2.1 Reata will retain ownership Ownership of all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate including Patent Rights and other intellectual property rights with respect toto such Inventions, shall be as set forth in this Article 7. Determination of inventorship of Inventions shall be made in accordance with US patent laws. Each Party will continue to own any Patent Rights and share Know-How that it owned prior to the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents Effective Date or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance creates or obtains outside the Territoryscope of this Agreement, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the which it licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party under this Agreement. As between the Parties and each Party hereby consents notwithstanding anything herein to such exploitation the contrary, Celgene shall have and licensing retain ownership of the other Party for jointly-owned InventionsCollaboration Sequence Pairs, Antibodies generated from and incorporating Collaboration Sequence Pairs, Products incorporating such Antibodies and any mutations or modifications to the Collaboration Sequence Pairs, including […***…], provided that Zymeworks shall retain all rights in the Zymeworks Platform and any Inventions comprising improvements thereto. For the avoidance of doubtclarity, all Reata antibody modification or mutations (other than modifications or mutations to the […***…]) created using the Zymeworks Platform will comprise improvements thereto and will be owned by Zymeworks, subject to the licenses and the Option set forth in Section 2.1. Except as otherwise provided in the foregoing sentence, Inventions that are made solely by Zymeworks (and all intellectual property rights therein, including Reata’s rights to any jointly-owned Inventionsthe Patent Rights claiming them) shall be included within owned solely by Zymeworks; Inventions that are made solely by Celgene (and all intellectual property rights therein, including the Licensed Technology hereunder Patent Rights claiming them) shall be owned solely by Celgene; and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Joint Inventions (and the Joint Patent Rights) shall be owned jointly by the Parties. Subject to Article 2, each Party has the terms and conditions of this Agreement, Kyowa Kirin hereby grants right to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license grant licenses under the Kyowa Kirin such Joint Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectlyJoint Patent Rights) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside without the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable licenseconsent of, or right to obtain such a licenseaccounting to, shall be obtained)the other Party.
Appears in 2 contracts
Samples: Collaboration Agreement (Zymeworks Inc.), Collaboration Agreement (Zymeworks Inc.)
Ownership of Inventions. 10.2.1 Reata will retain ownership Ownership of all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate including Patent Rights and other intellectual property rights with respect toto such Inventions, shall be as set forth in this Article 7. Determination of inventorship of Inventions shall be made in accordance with US laws. Each Party will continue to own any Patent Rights and share Know-How that it owned prior to the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents Effective Date or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance created or obtained outside the Territoryscope of this Agreement, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the which it licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party under this Agreement. For clarity, as between the Parties and each Party hereby consents notwithstanding anything herein to such exploitation the contrary, Xxxxx shall have and licensing retain ownership of the other Party for jointly-owned InventionsLilly Sequences and any Inventions related solely to the Lilly Sequences, and Zymeworks shall retain all rights in the Zymeworks Platform and any Inventions comprising improvements thereto. For the avoidance of doubtclarity, all Reata antibody mutations created or introduced by Zymeworks using the Zymeworks Platform will comprise improvements thereto and will be owned by Zymeworks, subject to the licenses set forth in Section 2.1; provided, however, that the physical embodiment of all Antibodies shall be owned by Xxxxx, subject to the rights and licenses granted to Zymeworks hereunder, including pursuant to Section 2.2. Except as otherwise provided in the foregoing sentence, Inventions that are made solely by Zymeworks (and all intellectual property rights therein, including Reata’s rights to any jointly-owned Inventionsthe Patent Rights claiming them) shall be included within owned solely by Zymeworks; Inventions that are made solely by Xxxxx (and all intellectual property rights therein, including the Licensed Technology hereunder Patent Rights claiming them) shall be owned solely by Xxxxx; and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Joint Inventions (and the Joint Patent Rights) shall be owned jointly by the Parties. Subject to Article 2 and Article 11, each Party has the terms and conditions of this Agreement, Kyowa Kirin hereby grants right to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license grant licenses under the Kyowa Kirin such Joint Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectlyJoint Patent Rights) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside without the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable licenseconsent of, or right to obtain such a licenseaccounting to, shall be obtained)the other Party.
Appears in 2 contracts
Samples: Licensing Agreement (Zymeworks Inc.), Licensing and Collaboration Agreement (Zymeworks Inc.)
Ownership of Inventions. 10.2.1 Reata will retain ownership of Kiniksa shall own all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Kiniksa Inventions, except that both GNE shall own all GNE Inventions, and Kiniksa and GNE shall jointly own all Joint Inventions. Kiniksa and GNE each shall require all of its, and to the extent conducting activities under this Agreement, their respective Affiliates’ and Sublicensees’, employees to assign all Inventions made by them to GNE and Xxxxxxx, as the case may be. The determination of inventorship for Inventions shall be in accordance with US inventorship laws as if such Inventions were made in the US. Subject to the licenses granted to GNE under Section 2.1 (Licenses), Xxxxxxx and GNE will each have an equal undivided share in the Joint Patent Rights, without obligation to account to the other for exploitation thereof, or to seek consent of the other Party for the grant of any license thereunder. With respect to any other Know-How (other than Kiniksa Inventions, GNE Inventions, and Joint Inventions) arising from the Parties’ activities under this Agreement, (a) Kiniksa shall own such Know-How made by employees of Kiniksa solely or jointly with a Third Party, (b) GNE shall own all Know-How made by employees of the GNE Group solely or jointly with a Third Party, and (c) the Parties shall retain joint ownership jointly own the Joint Know-How. If there is a disagreement between the Parties with respect to the inventorship of any Inventions that are conceivedInventions, made or generated then the Parties shall jointly by select a reputable patent attorney registered before the United States Patent and Trademark Office with over ten (10) years of experience in the relevant subject matter and submit such disagreement to the mutually-selected patent attorney for resolution under United States patent law. The decision of such patent attorney with respect to inventorship shall be final, unchallengeable, and bind both Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance expenses of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities attorney for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained)inventorship determination.
Appears in 1 contract
Ownership of Inventions. 10.2.1 Reata will retain ownership of
(a) Intercept shall own all Reata Inventions right, title and Kyowa Kirin shall retain ownership of interest in and to (i) the Specifications and the Intercept Information, (ii) any and all Kyowa Kirin Specified Inventions, except that both Parties (iii) the API and the API Precursor, and (iv) any and all work outputs and reports prepared by PharmaZell (together, “Intercept Intellectual Property”). PharmaZell shall, and shall retain joint ownership cause its Affiliates to, promptly disclose in writing to Intercept the discovery, development, making, conception or reduction to practice of any Inventions that are conceivedSpecified Invention and does hereby, made or generated jointly by both Parties. The Parties and shall reasonably cooperate with respect cause its Affiliates, employees, agents, subcontractors to, assign to Intercept any and share the out-of-pocket external cost ofall right, the preparation, filing, prosecution and maintenance of title or interest PharmaZell or its Affiliates may have in or to any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the TerritorySpecified Invention. Intercept shall, and the Parties share equally any such costs that are not attributable does hereby, grant to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata PharmaZell and its Affiliates a non-exclusive, royalty-freefree license to use the Specifications, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Intercept Information, Specified Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products Specified Invention Patents for all indications and all fields solely outside the Territorysole purpose of performing PharmaZell’s obligations hereunder. The foregoing license Specified Inventions and the work outputs and reports shall not be sublicenseable by Reata considered Intercept Information.
(directly or indirectlyb) to any Third Party licensee or collaboration partner PharmaZell shall keep complete, accurate and dated records of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party the results of the services performed under this Agreement and all Specified Inventions and will promptly and fully disclose to Intercept such results and Specified Inventions. Such records shall also identify the names of PharmaZell’s employees, officers or Affiliates who performed the work. Intercept may discuss, in person or otherwise, the services and the results thereof from time to time with PharmaZell and such employees. PharmaZell agrees that it shall not publish or present any information related to the Intercept Information, the Product, API or the results thereof, any Specified Inventions or any other Intercept Intellectual Property without the prior written consent of Intercept unless PharmaZell is legally obliged to do so. PharmaZell must identify and obtain Intercept’s approval prior to inclusion of any PharmaZell technology into any Supplied Material or other deliverable hereunder.
(c) PharmaZell shall own all right, title and interest in and to any and all Other PharmaZell Inventions. PharmaZell shall, and shall cause its Affiliates to, promptly disclose in writing to Intercept the discovery, development, making, conception or outside reduction to practice of any Other PharmaZell Invention. PharmaZell shall, and does hereby, grant to Intercept a non-exclusive, royalty-free, irrevocable and transferable license to Other PharmaZell Inventions and Other PharmaZell Invention Patents and, to any PharmaZell technology to the extent it is incorporated into or otherwise necessary to Manufacture or use API (including any Intermediary incorporated therein), with the right to sublicense through multiple tiers, to Exploit API and Products (and any Intermediary incorporated therein) in all fields of use in all countries worldwide.
(d) PharmaZell and Intercept shall jointly own all right, title and interest in and to any and all Joint Inventions. Each of PharmaZell and Intercept shall, and shall cause its respective Affiliates to, promptly disclose in writing to the other Party the discovery, development, making, conception or reduction to practice of any Joint Invention. For those countries worldwide where a specific license is required to be granted by a Joint Invention owner to the other Joint Invention owner in order for the other Joint Invention owner to practice such Joint Inventions in such country, (i) PharmaZell shall, and does hereby, grant to Intercept a non-exclusive, royalty-free, irrevocable, transferable license, with the right to sublicense through multiple tiers, to PharmaZell's interest in all Joint Inventions and Joint Invention Patents in all fields of use and (ii) Intercept shall, and does hereby, grant to PharmaZell a non-exclusive, royalty-free, irrevocable license, with the right to sublicense through multiple tiers, to Intercept 's interest in all Joint Inventions and Joint Invention Patents in all fields of use.
(e) Without limiting the provisions of this Agreement Section 5.1, PharmaZell shall use the Specifications and Intercept Information solely for purposes of performing its obligations hereunder.
(f) Upon the request and at the expense of Intercept, PharmaZell shall execute and deliver any and all instruments and documents and take such other acts as may be necessary or desirable to document the assignment and transfer described in Section 5.1(a) or to enable Intercept to secure its rights in the Specified Invention and Specified Invention Patents relating thereto in any and all jurisdictions, or to apply for, prosecute and enforce Specified Invention Patents, or to obtain any extension, validation, re-issue, continuance or renewal of any such Specified Invention Patents. Without limiting the foregoing, PharmaZell shall disclose to Intercept all pertinent information and data with respect thereto and shall execute all applications, specifications, oaths and all other instruments which Intercept deems necessary in order to Reata’s development apply for and regulatory activities for Licensed Products outside the Territory) to be under an obligation obtain such rights and in order to assign their rights and convey to Intercept the sole and exclusive right, title and interest in any inventions resulting therefrom and to such PartySpecified Invention Patents relating thereto. If Intercept is unable for any other reason to secure PharmaZell’s signature to apply for or to pursue any application for any United States or foreign patent, except where Applicable Law requires otherwise trademark, copyright or other registration covering Inventions assigned to Intercept hereunder, then PharmaZell hereby irrevocably designates and except appoints Intercept and its duly authorized officers and agents as PharmaZell’s agent and attorney in fact, to act for and in PharmaZell’s behalf and instead to execute and file any such applications and to do all other lawfully permitted acts to further the case prosecution and issuance of governmentalletters patent or trademark, not-for-profit copyright or other registrations thereon with the same legal force and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).effect as if executed by PharmaZell.
Appears in 1 contract
Samples: Manufacturing Agreement (Intercept Pharmaceuticals, Inc.)
Ownership of Inventions. 10.2.1 Reata will retain ownership of all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both As between the Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit remain owner of its Patents and license such jointlyKnow-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting How that the Party Controls prior to the other Party and each Party hereby consents to such exploitation and licensing Effective Date of this Agreement or that it develops independently of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin activities under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin . Roche hereby grants to Reata and its Affiliates Vividion a worldwide, non-exclusive, royaltyirrevocable, fully-freepaid up license, sublicenseable (except as provided below) license under with the Kyowa Kirin Inventions (including Kyowa Kirin’s rights right to any jointly-owned Inventions) grant and authorize sublicenses, to developmake, use, sell, offer to sell, import and otherwise exploit for saleany purpose Vividion E3 Technology; in each case including all intellectual property rights therein Controlled by Roche, makesubject to the exclusive license granted to Roche under Section 5.2.1, import5.2.2, 5.2.3. Notwithstanding anything to the contrary, Vividion shall own inventions and resulting Patents to the extent comprising or directed to Vividion CRG Technology, if any, and export (Roche hereby assigns to Vividion all of Roche’s right, title and interest in and to Vividion CRG Technology, if any. Roche shall promptly disclose to Vividion any Vividion E3 Technology and Vividion CRG Technology (if any) upon creation thereof and provide Vividion with any information and materials pertaining thereto to the extent necessary to exploit any such Vividion E3 Technology and Vividion CRG Technology. Vividion shall own all Vividion Inventions, Roche shall own all Roche Inventions, and Vividion and Roche shall jointly own all Joint Inventions. Vividion and Roche each shall require all of its personnel to assign all inventions related to Products and Shared Products made by them to Roche and Vividion, as the case may be. In case of a Joint Invention, the Parties shall discuss in good faith the assignment of any Patent claiming such Joint Invention to one Party and an appropriate license of such Patent to the other Party. Inventorship for Inventions (including Patents and Know-How) first made during the course of the performance of activities under this Agreement will be determined in accordance with United States patent laws for determining inventorship. Vividion and Roche each shall require all of its employees, consultants and contractors to assign all Inventions conceived by them to Roche and/or Vividion, to the extent required by this Agreement. Subject to the terms of this Agreement, including the licenses granted under Sections 5.1 and 5.2, each Party shall have an equal, undivided interest in any Joint Invention, and any Patent filed on such actions taken on its behalf Joint Invention, without obligation to account to the other for the practice, license or other exploitation thereof or to seek consent of the other Party for such activities and each Party hereby waives any right it may have under the laws of any jurisdiction to require any such consent or accounting. With respect to Know-How (other than Inventions), Vividion shall own such Know-How made by agentsemployees of Vividion solely or jointly with a Third Party, contractors and other Roche shall own such Know-How made by employees of the Roche Group solely or jointly with a Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the TerritoryParty. The foregoing license Except as specifically set forth herein, this Agreement shall not be sublicenseable by Reata construed as (directly or indirectlyi) to giving any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in Parties any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, right, title, interest in or ownership to the Confidential Information; (ii) granting any license or right under any intellectual property rights; or (iii) representing any commitment by either Party to obtain such a licenseenter into any additional agreement, shall be obtained)by implication or otherwise.
Appears in 1 contract
Samples: Collaboration, Option and License Agreement (Vividion Therapeutics, Inc.)
Ownership of Inventions. 10.2.1 Reata will retain The following terms and conditions shall apply to the ownership of Inventions unless provided for otherwise in this Agreement: Each Party shall remain owner of its Patent Rights and Know-How. BPM shall solely own Inventions solely related to any improvements to the BPM Technology and all Reata Inventions Patent Rights and Kyowa Kirin shall retain ownership Know-How relating thereto (which will be treated as BPM Technology). Prior to exercise of an Option Right for each Collaboration Target by Roche, all Kyowa Kirin InventionsCollaboration Compounds and all Other Compounds for a given Collaboration Target or other Targets, except that both Parties shall retain joint ownership including their methods of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate with respect tomanufacture […***…] and use, and share all Patent Rights and Know-How relating thereto (including Collaboration Compound IP) shall be solely owned by BPM (with all of the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs foregoing that are not attributable “Collaboration Compounds” or “Collaboration Compound IP” referred to any particular territoryherein as “Other Compound IP”). In connection […***…] All Patent Rights and Know-How generated under this Agreement to the extent related to biomarkers or bioreagents, including their methods of manufacture and use, (the “Biomarker IP”) shall be owned jointly by the Parties (with US rules on joint ownership to apply worldwide). After exercise of an Option Right for each Collaboration Target by Roche, all Patent Rights and Know-How arising from the development or commercialization of Licensed Products, including their methods of manufacture and use, that is generated by (i) either Party individually shall be owned by such generating Party or (ii) both Parties jointly shall be owned jointly by the Parties (with US rules on joint ownership to apply worldwide). Subsequent to exercise of an Option Right for a given Collaboration Target, the Roche Group shall not generate additional compounds directed to such Collaboration Target under this Agreement. Subject to the foregoing, all Patent Rights and Know-How generated under this Agreement to the extent related to Collaboration Targets, including their methods of manufacture and use (other than Collaboration Compound IP, BPM Technology, Other Compound IP, Biomarker IP or […***…]), shall be owned jointly by the Parties shall agree upon a lead Party (with US rules on joint ownership to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect theretoapply worldwide). Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party Inventorship for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights Patent Rights and Know-How) first made during the course of the performance of activities under this Agreement will be determined in accordance with United States patent laws for determining inventorship. BPM and Roche each shall require all of its employees, consultants and contractors to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed assign all Inventions conceived by them to Kyowa Kirin under Section 2.1.
10.2.2 Subject Roche and/or BPM, to the terms and conditions of extent required by this Agreement. Except as specifically set forth herein, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license this Agreement shall not be sublicenseable construed, by Reata estoppel, implication or otherwise, as (directly i) giving any of the Parties any license, right, title, interest in or indirectly) ownership to any Confidential Information; (ii) granting any license or right under any Patent Rights or Know-How; or (iii) representing any commitment by either Party to enter into any additional agreement. Notwithstanding anything in this Agreement to the contrary, all in-licensed Patent Rights or Know-How Controlled by a Party hereto will be subject to the applicable Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).agreement.
Appears in 1 contract
Samples: Collaboration and License Agreement (Blueprint Medicines Corp)
Ownership of Inventions. 10.2.1 Reata will retain ownership of (a) Intercept shall own all Reata Inventions right, title and Kyowa Kirin shall retain ownership of interest in and to (i) the Specifications and the Intercept Information, (ii) any and all Kyowa Kirin Specified Inventions, except that both Parties (iii) the API and the API Precursor, and (iv) any and all work outputs and reports prepared by PharmaZell (together, “Intercept Intellectual Property”). PharmaZell shall, and shall retain joint ownership cause its Affiliates to, promptly disclose in writing to Intercept the discovery, development, making, conception or reduction to practice of any Inventions that are conceivedSpecified Invention and does hereby, made or generated jointly by both Parties. The Parties and shall reasonably cooperate with respect cause its Affiliates, employees, agents, subcontractors to, assign to Intercept any and share the out-of-pocket external cost ofall right, the preparation, filing, prosecution and maintenance of title or interest PharmaZell or its Affiliates may have in or to any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the TerritorySpecified Invention. Intercept shall, and the Parties share equally any such costs that are not attributable does hereby, grant to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata PharmaZell and its Affiliates a non-exclusive, royalty-freefree license to use the Specifications, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Intercept Information, Specified Inventions) to develop, use, sell, offer for sale, make, import, and export Specified Invention Patents for the sole purpose of performing PharmaZell’s obligations hereunder. The Specified Inventions and the work outputs and reports shall be considered Intercept Information.
(b) PharmaZell shall keep complete, accurate and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications dated records of the results of the services performed under this Agreement and all fields solely outside Specified Inventions and will promptly and fully disclose to Intercept such results and Specified Inventions. Such records shall also identify the Territorynames of PharmaZell’s employees, officers or Affiliates who performed the work. The foregoing license Intercept may discuss, in person or otherwise, the services and the results thereof from time to time with PharmaZell and such employees. PharmaZell agrees that it shall not be sublicenseable by Reata (directly publish or indirectly) present any information related to the Intercept Information, the Product, API or the results thereof, any Third Party licensee Specified Inventions or collaboration partner any other Intercept Intellectual Property without the prior written consent of Reata that does not grant Intercept unless PharmaZell is legally obliged to Reata a reciprocal license do so. PharmaZell must identify and obtain Intercept’s approval prior to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin inclusion of any PharmaZell technology into any Supplied Material or other deliverable hereunder.
10.2.3 (c) PharmaZell shall own all right, title and interest in and to any and all Other PharmaZell Inventions. PharmaZell shall, and shall cause its Affiliates to, promptly disclose in writing to Intercept the discovery, development, making, conception or reduction to practice of any Other PharmaZell Invention. PharmaZell shall, and does hereby, grant to Intercept a non-exclusive, royalty-free, irrevocable and transferable license to Other PharmaZell Inventions and Other PharmaZell Invention Patents and, to any PharmaZell technology to the extent it is incorporated into or otherwise necessary to Manufacture or use API (including any Intermediary incorporated therein), with the right to sublicense through multiple tiers, to Exploit API and Products (and any Intermediary incorporated therein) in all fields of use in all countries worldwide.
(d) PharmaZell and Intercept shall jointly own all right, title and interest in and to any and all Joint Inventions. Each of PharmaZell and Intercept shall, and shall cause its respective Affiliates to, promptly disclose in writing to the other Party will cause the discovery, development, making, conception or reduction to practice of any Joint Invention. For those countries worldwide where a specific license is required to be granted by a Joint Invention owner to the other Joint Invention owner in order for the other Joint Invention owner to practice such Joint Inventions in such country, (i) PharmaZell shall, and does hereby, grant to Intercept a non-exclusive, royalty-free, irrevocable, transferable license, with the right to sublicense through multiple tiers, to PharmaZell's interest in all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement Joint Inventions and Joint Invention Patents in all fields of use and (or outside ii) Intercept shall, and does hereby, grant to PharmaZell a non-exclusive, royalty-free, irrevocable license, with the right to sublicense through multiple tiers, to Intercept 's interest in all Joint Inventions and Joint Invention Patents in all fields of use.
(e) Without limiting the provisions of this Agreement Section 5.1, PharmaZell shall use the Specifications and Intercept Information solely for purposes of performing its obligations hereunder.
(f) Upon the request and at the expense of Intercept, PharmaZell shall execute and deliver any and all instruments and documents and take such other acts as may be necessary or desirable to document the assignment and transfer described in Section 5.1(a) or to enable Intercept to secure its rights in the Specified Invention and Specified Invention Patents relating thereto in any and all jurisdictions, or to apply for, prosecute and enforce Specified Invention Patents, or to obtain any extension, validation, re-issue, continuance or renewal of any such Specified Invention Patents. Without limiting the foregoing, PharmaZell shall disclose to Intercept all pertinent information and data with respect thereto and shall execute all applications, specifications, oaths and all other instruments which Intercept deems necessary in order to Reata’s development apply for and regulatory activities for Licensed Products outside the Territory) to be under an obligation obtain such rights and in order to assign their rights and convey to Intercept the sole and exclusive right, title and interest in any inventions resulting therefrom and to such PartySpecified Invention Patents relating thereto. If Intercept is unable for any other reason to secure PharmaZell’s signature to apply for or to pursue any application for any United States or foreign patent, except where Applicable Law requires otherwise trademark, copyright or other registration covering Inventions assigned to Intercept hereunder, then PharmaZell hereby irrevocably designates and except appoints Intercept and its duly authorized officers and agents as PharmaZell’s agent and attorney in fact, to act for and in PharmaZell’s behalf and instead to execute and file any such applications and to do all other lawfully permitted acts to further the case prosecution and issuance of governmentalletters patent or trademark, not-for-profit copyright or other registrations thereon with the same legal force and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained)effect as if executed by PharmaZell.
Appears in 1 contract
Samples: Manufacturing Agreement (Intercept Pharmaceuticals Inc)
Ownership of Inventions. 10.2.1 Reata will (a) Pre-existing IP. Subject only to the rights expressly granted to the other Party under this Agreement, each Party shall retain ownership all rights, title and interests in and to any Intellectual Property Rights that are owned by, or licensed or sublicensed to, such Party prior to the Effective Date or independent of this Agreement.
(b) Inventorship of Inventions shall be determined in accordance with the rules and regulations of the U.S. Patent and Trademark Office.
(c) All Inventions made solely by employees, agents and independent contractors of Licensor or its Affiliates pursuant to this Agreement and all Reata Intellectual Property Rights therein, shall be owned, as between the Parties, solely by the Licensor (“Licensor Inventions”).
(d) All Inventions made solely by employees, agents and independent contractors of Licensee or its Affiliates or Sublicensees, pursuant to this Agreement and all Intellectual Property Rights therein, shall be owned, as between the Parties, solely by Licensee (“Licensee Inventions”).
(e) All Inventions made jointly by employees, agents and independent contractors of each Party or its Affiliates or sublicensees (including Sublicensees as applicable) pursuant to this Agreement, and all Intellectual Property Rights therein, shall be owned jointly by the Parties such that each Party shall have an undivided interest therein (“Joint Inventions”).
(f) All Patents claiming patentable, jointly owned Joint Inventions shall be referred to herein as “Joint Patent Rights.” Except to the extent either Party is restricted by the licenses granted to the other Party and covenants set forth herein, each Party shall be entitled to practice and exploit the Joint Inventions and Kyowa Kirin shall retain ownership the Intellectual Property Rights therein, for all purposes on a worldwide basis and to grant licenses thereunder, without any duty of accounting or obligation to seek consent from the other Party with respect thereto. Each Party will: (i) grant and hereby does grant all Kyowa Kirin Inventionspermissions, except that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate consents and waivers with respect to, and share the out-of-pocket external cost ofall licenses under, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the TerritoryJoint Inventions, and Intellectual Property Rights therein, throughout the Parties share equally any such costs that are not attributable world, (ii) execute documents as reasonably necessary to any particular territory). In connection with accomplish the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a (iii) reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence cooperate with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to transfer to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement physical embodiments (or outside copies thereof) of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such PartyJoint Inventions, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained)[***].
Appears in 1 contract
Ownership of Inventions. 10.2.1 Reata will retain ownership All GalXC Platform Improvements shall be owned by Dicerna. Roche shall promptly notify Dicerna of any GalXC Platform Improvements invented by Roche solely or jointly with Dicerna. Roche hereby assigns and agrees to assign to Dicerna all Reata Inventions right, title and Kyowa Kirin interest in such GalXC Platform Improvements and to execute and deliver all documents, instruments and other papers and take all actions necessary to perfect such assignment and for Dicerna to Handle Patent Rights in such GalXC Platform Improvements. All Roche Background Improvements shall retain ownership be owned by Roche. Dicerna shall promptly notify Roche of Roche Background Improvements invented by Dicerna solely or jointly with Roche. Dicerna hereby assigns and agrees to assign to Roche all Kyowa Kirin right, title and interest in such Roche Background Improvements and to execute and deliver all documents, instruments and other papers and take all actions necessary to perfect such assignment and for Roche to Handle Patent Rights in such Roche Background Improvements. Other than GalXC Platform Improvements and Roche Background Improvements, Dicerna shall own all Dicerna Inventions, except that both Parties Roche shall retain joint ownership own all Roche Inventions, and Dicerna and Roche shall jointly own all Joint Inventions. Dicerna and Roche each shall require all of any its employees to assign all Inventions that are conceivedmade by them to Roche and Dicerna, made or generated jointly by both Partiesas the case may be. The Parties determination of inventorship for Inventions shall reasonably cooperate be in accordance with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any US inventorship laws as if such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance were made in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect theretoUS. Subject to the licenses granted to under this Agreement, Dicerna and Roche will each Party hereunder have an equal undivided share in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein)the Joint Patent Rights, without any obligation or requirement of an accounting to account to the other Party and each Party hereby consents for exploitation thereof, or to such exploitation and licensing seek consent of the other Party for jointlythe grant of any license thereunder. Except as specifically set forth herein, this Agreement shall not be construed as: (i) giving any of the Parties any license, right, title, interest in or ownership to (a) the Confidential Information of the other Party or (b) any materials, Know-owned InventionsHow, Patent Rights or other intellectual property rights Controlled by the other Party or its Affiliates; (ii) granting any license or right under any intellectual property rights; or (iii) representing any commitment by either Party to enter into any additional agreement, by implication or otherwise. For the avoidance of doubt, all Reata Inventions With respect to Know-How (including Reata’s rights to any jointly-owned other than patentable Inventions) shall be included within the Licensed Technology hereunder and licensed made in connection with any activity carried out pursuant to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates Dicerna shall own such Know-How made by employees of Dicerna solely or jointly with a nonThird Party, Roche shall own such Know-exclusive, royalty-free, sublicenseable (except as provided below) license under How made by employees of the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, importRoche Group solely or jointly with a Third Party, and export (and the Parties shall jointly own Joint Know-How, subject to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunderSection 2.6.1.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 1 contract
Samples: Collaboration and License Agreement (Dicerna Pharmaceuticals Inc)
Ownership of Inventions. 10.2.1 Reata will retain ownership All discoveries and inventions, whether or not patentable, that are conceived or reduced to practice in the performance of any of the DEVELOPMENT PLANS under this AGREEMENT, together with all Reata Inventions intellectual property rights therein, shall be deemed “INVENTIONS.” UTMDACC shall solely own all INVENTIONS solely made by employees, other agents and Kyowa Kirin consultants of UTMDACC (the “UTMDACC PERSONNEL”), other than any STUDY-PRODUCT INVENTIONS. PRECIGEN shall retain ownership solely own all INVENTIONS solely made by employees, other agents and consultants of either or both PRECIGEN AND ZIOPHARM, that are conceived or reduced to practice prior to the Fourth Amendment Effective Date, and all Kyowa Kirin InventionsSTUDY-PRODUCT INVENTIONS related to or arising from CD33 CAR clinical trial regardless of the inventorship (the “LICENSEE PERSONNEL”). ZIOPHARM shall solely own all INVENTIONS solely made by employees, except other agents and consultants of ZIOPHARM, that both Parties are conceived or reduced to practice on or after the Fourth Amendment Effective Date; regardless of the inventorship and all other STUDY-PRODUCT INVENTIONS. For clarity, any VISITING SCIENTIST shall retain joint be deemed an employee of LICENSEE and not UTMDACC for the purpose of determining the inventorship and ownership of any Inventions that are conceived, INVENTIONS. UTMDACC and PRECIGEN shall jointly own all INVENTIONS made or generated jointly by both Parties. The Parties LICENSEE PERSONNEL and UTMDACC PERSONNEL prior to the Fourth Amendment Effective Date other than any STUDY PRODUCT INVENTIONS and UTMDACC and ZIOPHARM shall reasonably cooperate jointly own all INVENTIONS made jointly by LICENSEE PERSONNEL and UTMDACC PERSONNEL on or after the Fourth Amendment Effective Date other than any STUDY PRODUCT INVENTIONS, with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance each of any patents or patent applications on any such jointly-owned Inventions based UTMDACC on the Territory involved (i.e.one hand and PRECIGEN and ZIOPHARM, Kyowa Kirin pays respectively, on the other hand owning an undivided interest in and to such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territoryjoint INVENTIONS, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, right to practice and exploit such INVENTIONS without the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance duty of any such patent applications accounting or patents on jointly-owned Inventions and seeking consent from the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect theretoother. Subject Notwithstanding anything to the licenses granted to each Party hereunder contrary in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata LICENSEE shall at all times retain all rights and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except interest in the case LICENSEE MATERIALS. “STUDY PRODUCT INVENTIONS” means all INVENTIONS made by a party or the parties jointly in the course of governmental, not-for-profit the conduct of any CLINICAL TRIAL and public institutions which have standard policies against such an assignment (in which case a suitable licensethat related to the composition or formulation of, or right to obtain such the method of making, using or administering or studying, a license, shall be obtained)STUDY PRODUCT.
Appears in 1 contract
Samples: Research and Development Agreement (Ziopharm Oncology Inc)
Ownership of Inventions. 10.2.1 Reata will retain 7.1.1 Inventorship of inventions shall be determined in accordance with the rules of inventorship under United States patent law.
7.1.2 All right, title and interest in and to any Improvements that are (a) authorized or made by, on behalf of or at the request of IDM shall be the sole property of IDM ("IDM IMPROVEMENTS"), (b) authorized or made by, on behalf of or at the request of Epimmune shall be the sole property of Epimmune ("EPIMMUNE IMPROVEMENTS"), and (c) made jointly by IDM and Epimmune shall be the joint property of IDM and Epimmune ("JOINT IMPROVEMENTS"). Each Party may freely practice any Joint Improvements outside the Field of Use.
7.1.3 IDM shall grant to Epimmune a [...***...], worldwide, [...***...] license to any IDM Improvements thaT directly incorporate any peptides or cell lines that are included in the Licensed Know-How and/or patentable improvements or modifications to the Licensed Patents Rights for all uses. Such license shall be negotiated in good faith by the Parties. Epimmune may sublicense its rights under the license to its Affiliates and Third Parties to whom Epimmune also licenses its own technology in conjunction with such sublicense. IDM shall promptly notify Epimmune in writing of any IDM Improvements licensed to Epimmune under this Section. For clarification, this Section 7.1.3 does not apply to any IDM proprietary technology and improvements thereto that are owned or licensed by IDM other than pursuant to the terms of this Agreement. In particular this section 7.1.3 does not apply to any IDM Improvements that constitute a product and/or process and/or an application using the Licensed Materials.
7.1.4 Except as provided in Section 7.1.2, ownership of inventions, discoveries, developments and improvements conceived or reduced to practice in the course of activities conducted under this Agreement, and all Reata Inventions patent applications, patents and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate other intellectual property rights with respect to, and share to the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved foregoing shall be determined in accordance with inventorship (i.e., Kyowa Kirin pays such costs for prosecution a Party shall solely own all inventions, discoveries, developments and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territoryimprovements conceived or reduced to practice solely by its employees or agents, and the Parties share equally any shall jointly own all such costs that are not attributable inventions, discoveries, developments and improvements conceived or reduced to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in practice jointly by their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation employees or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside of this Agreement with respect to Reata’s development and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 1 contract
Samples: License Agreement (Epimmune Inc)
Ownership of Inventions. 10.2.1 Reata (a) Except as otherwise provided in and subject to the terms of this Agreement:
(i) Kinex shall have and retain all right, title and interest in or Control over, as applicable, all Intellectual Property (and Patent Rights arising thereunder) existing, owned or Controlled by it on the Effective Date, subject to the licenses and other rights granted to PharmaEssentia under this Agreement. Kinex will retain ownership also have all right, title and interest in or Control over all Intellectual Property (and Patent Rights arising thereunder) which is discovered, made, first conceived, reduced to practice or generated solely by its employees and/or agents as a result of all Reata Inventions and Kyowa Kirin shall retain ownership of all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of any Inventions the Development that are necessary or useful for the Development and/or Commercialization of the licensed Products; provided, however, during the term of this Agreement, PharmaEssentia shall have the right to use and sublicense such Intellectual Property, free of charge, with respect to the Licensed Products in the Territory.
(ii) PharmaEssentia shall have and retain all right, title and interest in or Control over all Intellectual Property (and Patent Rights arising thereunder; “PharmaEssentia Patent Rights”) which is discovered, made, first conceived, made reduced to practice or generated solely by its employees, agents and/or other persons as a result of the Development that are necessary or useful for the Development or Commercialization of the Licensed Products; provided, however, during the term of this Agreement, Kinex shall have the right to use and sublicense such Intellectual Property, free of charge, in relation to any products containing the Compound (or any other compound for oral dosage) as an active pharmaceutical ingredient within and outside the Territory other than for the Licensed Products within the Territory.
(iii) Any Intellectual Property (and Patent Rights arising thereunder) which is discovered, made, first conceived, reduced to practice or generated jointly by both Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon a lead Party be jointly owned by the Parties. PharmaEssentia shall have the right to administer use and sublicense such filingIntellectual Property, prosecution and maintenance free of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to reviewcharge, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventions) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1.
10.2.2 Subject to the terms and conditions of this Agreement, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirin’s rights to any jointly-owned Inventions) to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside in the Territory. The foregoing license Kinex shall not be sublicenseable by Reata (directly or indirectly) have the right to use and sublicense such Intellectual Property, free of charge, in relation to any Third Party licensee products containing the Compound (or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s any other compound for oral dosage) as an active pharmaceutical ingredient within and partner’s inventions and discoveries with respect to outside the Territory other than for the Licensed Products which license is sublicenseable to Kyowa Kirin hereunder.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party under this Agreement (or outside within the Territory during the term of this Agreement with respect and thereafter Kinex shall also be able to Reata’s development use and regulatory activities sublicense such Intellectual Property for the Licensed Products outside within the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 1 contract
Samples: License Agreement (Athenex, Inc.)
Ownership of Inventions. 10.2.1 Reata will retain ownership (a) Executive shall disclose all Inventions promptly and fully to Rubicon.
(b) Except as excluded in Paragraph 19(e) below, Executive hereby assigns to Rubicon all of Executive’s right, title, and interest in and to all Reata Inventions and Kyowa Kirin agrees that all such Inventions shall retain ownership be Rxxxxxx’s sole and exclusive property to the maximum extent permitted by law.
(c) Executive shall at the request of Rxxxxxx (but without additional compensation from Rxxxxxx): (i) execute any and all Kyowa Kirin Inventions, except papers and perform all lawful acts that both Parties shall retain joint ownership of any Inventions that are conceived, made or generated jointly by both Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, Rxxxxxx deems necessary for the preparation, filing, prosecution prosecution, and maintenance of applications for United States patents or copyrights and foreign patents or copyrights on any Inventions, (ii) execute such instruments as are necessary to assign to Rubicon or to Rxxxxxx’s nominee, all of Executive’s right, title, and interest in any Inventions so as to establish or perfect in Rubicon or in Rubicon’s nominee, the entire right, title, and interest in such Inventions, and (iii) execute any instruments and perform all lawful acts necessary or that Rubicon may deem desirable to confirm, perfect, record, protect, register or enforce Rubicon’s rights in any Inventions, including in connection with any continuation, renewal, or reissue of any patents in any Inventions, renewal of any copyright registrations for any Inventions, or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally conduct of any such costs that are not attributable proceedings or litigation relating to any particular territory)Inventions. In connection with All expenses incurred by the foregoing, Executive by reason of the Parties shall agree upon a lead Party to administer such filing, prosecution and maintenance performance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing of the other Party for jointly-owned Inventions. For the avoidance of doubt, all Reata Inventions (including Reata’s rights to any jointly-owned Inventionsobligations set forth in this Paragraph 19(c) shall be included within the Licensed Technology hereunder and licensed to Kyowa Kirin under Section 2.1borne by Rxxxxxx.
10.2.2 Subject to the terms and conditions (d) Concurrent with Executive’s execution of this Agreement, Kyowa Kirin Executive lists and provides a brief description below of all unpatented inventions and discoveries, if any, made or conceived by Executive prior to the Effective Date that are owned by Executive and are to be excluded from this Agreement. If no such list is provided below at the time of execution of this Agreement, it shall be conclusively presumed that Executive has waived any right Executive may have to any such invention or discovery which relates to Rxxxxxx’s business.
(e) Provisions (a) through (d) of this Paragraph 19 regarding assignment of right, title, and interest do not apply to Inventions for which assignment is prohibited by California Labor Code Section 2870 or any like statute of any other state. Executive is hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under the Kyowa Kirin Inventions (including Kyowa Kirinnotified of Executive’s rights under California Labor Code Section 2870 which provides: “
(a) Any provision in an employment agreement which provides that an employee shall assign, or offer to assign, any jointly-owned Inventions) of his or her rights in an invention to develop, use, sell, offer for sale, make, import, and export (and to have such actions taken on its behalf by agents, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside the Territory. The foregoing license his or her employer shall not be sublicenseable apply to an invention that the employee developed entirely on his or her own time without using the employer’s equipment, supplies, facilities, or trade secret information except for those inventions that either: (1) Relate at the time of conception or reduction to practice of the invention to the employer’s business, or actual or demonstrably anticipated research or development of the employer; or (2) Result from any work performed by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunderthe employee for the employer.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such Party (b) To the extent a provision in an employment agreement purports to require an employee to assign an invention otherwise excluded from being required to be assigned under this Agreement subdivision (or outside a), the provision is against the public policy of this Agreement with respect to Reata’s development state and regulatory activities for Licensed Products outside the Territory) to be under an obligation to assign their rights in any inventions resulting therefrom to such Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained)is unenforceable.”
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Samples: Executive Employment Agreement (Rubicon Technologies, Inc.)
Ownership of Inventions. 10.2.1 Reata 9.3.1 At all times during the Term and thereafter, GSK will retain ownership of own the GSK Program Rights. Eurand will at all Reata Inventions times during the Term and Kyowa Kirin shall retain ownership of thereafter own any and all Kyowa Kirin Inventions, except that both Parties shall retain joint ownership of inventions relating *** to the ODT Technology.
9.3.2 Each Party will promptly disclose to the Steering Committee any Inventions that are conceived, inventions or improvements made or generated conceived by such Party, its Affiliates or any person or Entity under such Party’s or its Affiliate’s supervision, either alone or jointly by both Parties. The Parties shall reasonably cooperate with respect to, and share the out-of-pocket external cost of, the preparation, filing, prosecution and maintenance of any patents or patent applications on any such jointly-owned Inventions based on the Territory involved (i.e., Kyowa Kirin pays such costs for prosecution and maintenance in the Territory and Reata pays such costs for prosecution and maintenance outside the Territory, and the Parties share equally any such costs that are not attributable to any particular territory). In connection with the foregoing, the Parties shall agree upon course of or as a lead Party to administer such filing, prosecution and maintenance of any such patent applications or patents on jointly-owned Inventions and the Parties shall provide the non-lead Party a reasonably opportunity to review, comment on and approve (not to be unreasonably withheld) in advance any material filings and correspondence with applicable patent offices with respect thereto. Subject to the licenses granted to each Party hereunder in their respective territories, each Party shall have full rights to exploit and license such jointly-owned Inventions (and any patent rights therein), without any obligation or requirement of an accounting to the other Party and each Party hereby consents to such exploitation and licensing result of the other Party activities under the Program (the “Inventions”); provided, however for jointly-owned Inventions. For the avoidance of doubt, the term “Inventions” will not include or be deemed to include *** or *** or *** or its Affiliates relating to *** and/or *** for Product. The Steering Committee will determine the strategy for protecting all Reata such Inventions, including, without limitation, the filing of patent applications on any Inventions, in a manner consistent with this Section 9.3 and in accordance with Section 5.6; provided, however, the Steering Committee shall not prevent Eurand from filing patent applications that do not disclose or claim any GSK Inventions or prevent GSK from filing any application that does not disclose or claim any Eurand Inventions.
9.3.3 GSK will *** own Inventions which relate to the *** and/or ***, but excluding Inventions relating *** to the ODT Technology (collectively, the “GSK Inventions”), irrespective of whether the inventor is an employee of Eurand or its Affiliates or GSK or whether there are joint inventors, some of whom are employees of Eurand (or its Affiliates) and some of whom are employees of GSK. As determined by the Steering Committee, GSK will have the right, at its sole expense using in-house or outside legal counsel selected ***, to prepare, file, prosecute, maintain and extend any and all Patent Rights inside and/or outside of the Territory on GSK Inventions (including Reata’s rights the “GSK Invention Patent Rights”). Notwithstanding the foregoing, Eurand will have the right to review all pending patent applications included within the GSK Invention Patent Rights, significant filings and other significant proceedings ***, and make recommendations to GSK concerning them and their conduct, which recommendations GSK will consider in good faith. Eurand will provide any jointly-owned such patent consultation to GSK at *** to GSK. Further, Eurand will, and will cause its Affiliates and its and their respective employees to, *** GSK in preparing patent applications on GSK Inventions to the extent such are related to the *** *** and will provide GSK with *** of *** to the GSK Inventions) shall . Any GSK Invention Patent Rights, except as set forth in Section ***, will be deemed to be included within the Licensed Technology hereunder GSK Patent Rights and licensed any Know-How related to Kyowa Kirin under Section 2.1such GSK Inventions will be deemed to be included within GSK Know-How.
10.2.2 Subject 9.3.4 Eurand will solely own Inventions which relate *** (the “Eurand Inventions”), irrespective of whether the inventor is an employee of GSK or its Affiliates or Eurand or whether there are joint inventors, some of whom are employees of GSK (or its Affiliates) and some of whom are employees of Eurand. As determined by the Steering Committee Eurand will have the right at *** expense using in-house or outside legal counsel selected at Eurand’s sole discretion to prepare, file, prosecute, maintain and extend any and all Patent Rights inside and/or outside of the Territory on Eurand Inventions. GSK will, and will cause its Affiliates and its and their respective employees to, cooperate with Eurand in preparing patent applications on Eurand Inventions and to provide Eurand with appropriate assignment of Intellectual Property Rights to the terms Eurand Inventions. Any patent applications and conditions patents filed by or on behalf of this AgreementEurand on Eurand Inventions, Kyowa Kirin hereby grants to Reata and its Affiliates a non-exclusive, royalty-free, sublicenseable (except as provided below) license under set forth in Section 9.4.2, will be deemed to be included within the Kyowa Kirin Eurand Patent Rights and any Know-How related to such Eurand Inventions (including Kyowa Kirin’s rights will be deemed to any jointlybe included within Eurand Know-owned Inventions) How.
9.3.5 GSK will exclusively own the GSK Data and such GSK Data will be deemed to develop, use, sell, offer for sale, make, importbe GSK Know-How and GSK Confidential Information, and export (will constitute part of the GSK Program Rights. Eurand will exclusively own the Eurand Data and such Eurand Data will be deemed to have such actions taken on its behalf by agentsbe Eurand Know-How and Eurand Confidential Information, contractors and other Third Party service providers) Licensed Compounds and Licensed Products for all indications and all fields solely outside will constitute part of the Territory. The foregoing license shall not be sublicenseable by Reata (directly or indirectly) to any Third Party licensee or collaboration partner of Reata that does not grant to Reata a reciprocal license to such licensee’s and partner’s inventions and discoveries with respect to Licensed Products which license is sublicenseable to Kyowa Kirin hereunderEurand Intellectual Property Rights.
10.2.3 Each Party will cause all Persons who perform clinical development activities or regulatory activities for such 9.3.6 Any information contained in a patent filing by a Party under this Agreement (or outside will be subject to the confidentiality provisions of this Agreement with respect to Reata’s development Section 13, unless and regulatory activities for Licensed Products outside until such patent filing is published by an applicable Patent Office, and the Territory) to Confidential Information of a Party may not be under an obligation to assign their rights used by the other Party in any inventions resulting therefrom to a patent filing without the express written consent of such first Party, except where Applicable Law requires otherwise and except in the case of governmental, not-for-profit and public institutions which have standard policies against such an assignment (in which case a suitable license, or right to obtain such a license, shall be obtained).
Appears in 1 contract
