Common use of Program IP Clause in Contracts

Program IP. (i) Except as otherwise provided in Sections 10.2(a) or 10.2(b), ownership of any Program IP created or conceived solely by or on behalf of a Party will be solely owned by such Party (together with rights owned by such Party pursuant to Section 10.2(a) or 10.2(b), rights described in this Section 10.2(c) are referred to herein as “Sole Program IP” for each Party), and if created or conceived jointly by or on behalf of the Parties will be jointly owned by the Parties (referred to herein as “Joint Program IP”). Accordingly, any BIND Core IP, Sole Program IP or Joint Program IP in which BIND has an ownership interest will be “BIND Program IP”, and any Amgen Core IP, Sole Program IP or Joint Program IP in which Amgen has an ownership interest will be “Amgen Program IP”. (ii) Each Party will have an undivided one-half interest in and to Joint Program IP. Each Party will exercise its ownership rights in and to such Joint Program IP, including the Amgen Contract No.: 2013579490 25 right to license and sublicense or otherwise to exploit, transfer or encumber its ownership interest, without an accounting or obligation to, or consent required from, the other Party, but subject to the licenses hereunder and the other terms and conditions of this Agreement. At the reasonable written request of a Party, the other Party will in writing grant such consents and confirm that no such accounting is required to effect the foregoing regarding Joint Program IP. Each Party, for itself and on behalf of its Affiliates, licensees and sublicensees, and employees, subcontractors, consultants and agents of any of the foregoing, hereby assigns (and to the extent such assignment can only be made in the future hereby agrees to assign), to the other Party a joint and undivided interest in and to all Joint Program IP. (iii) Subject to the terms and conditions of this Agreement (including Section 11 and Section 12): (A) Each Party will be solely responsible for the Prosecution and Maintenance, and the enforcement and defense, of any Patents within its Sole Program IP, and the other Party will have no rights with respect thereto; and (B) The Prosecution and Maintenance, and the enforcement and defense, of any Patents within Joint Program IP will be jointly managed by the Parties on mutually agreeable terms to be entered into by the Parties at the time any such Patents are first filed, and all recoveries and out-of-pocket costs and expenses arising from those activities, absent further agreement, will be shared equally by the Parties (provided that sufficient advance written notice of any such costs or expenses is given to the Party not incurring same), provided that if either Party elects not to pay any such costs or expenses for any such Patent, the Parties will meet and agree upon an equitable way to treat such Patent.

Program IP. (i) Except as otherwise provided in Sections 10.2(a9.2(a) or 10.2(b9.2(b), ownership of any Program IP created or conceived solely by or on behalf of a Party will be solely owned by such Party (together with rights owned by such Party pursuant to Section 10.2(aSections 9.2(a) or 10.2(b9.2(b), rights described in this Section 10.2(c9.2(c) are referred to herein as “Sole Program IP” for each Party), and if created or conceived jointly by or on behalf of the Parties (either during the course of the Feasibility Study Agreement or under this Agreement) will be jointly owned by the Parties (referred to herein as “Joint Program IP”). Accordingly, any BIND Core IP, Sole Program IP or Joint Program IP in which BIND has an ownership interest will be “BIND Program IP”, and any Amgen AstraZeneca Core IP, Sole Program IP or Joint Program IP in which Amgen AstraZeneca has an ownership interest will be “Amgen AstraZeneca Program IP”. (ii) Each Party will have an undivided one-half interest in and to Joint Program IP. Each Party will may exercise its ownership rights in and to such Joint Program IP, including the Amgen Contract No.: 2013579490 25 right to license and sublicense or otherwise to exploit, transfer or encumber its ownership interest, without an accounting or obligation to, or consent required from, the other Party, but subject to the licenses hereunder and the other terms and conditions of this Agreement, without an accounting or obligation to, or consent in from, the other Party, except as specially set forth in this Section 9.2(c). At the time of filing a patent application that covers any Joint Program IP, the Parties will discuss whether such independent exercising of ownership rights for that subject matter might impact on each parties’ commercial interests. If one party is of the opinion that its commercial interests might be so impacted, then the Parties will file patent applications to cover two patent families, such that one patent family will claim the commercially sensitive subject matter only (and will become Sole Program IP for that Party), and the other patent family will claim the Joint Program IP only. BIND agrees that it will need to obtain AstraZeneca’s prior written consent to license or sublicense any AstraZeneca Program IP to any Third Party. AstraZeneca agrees that it will have the rights to grant licenses or sublicenses any BIND Program IP as set forth in Section 7.5 only. (iii) At the reasonable written request of a Party, the other Party will in writing grant such consents and confirm that no such accounting is required to effect the foregoing regarding Joint Program IP. Each Party, for itself and on behalf of its Affiliates, licensees and sublicensees, and employees, subcontractors, consultants and agents of any of the foregoing, hereby assigns (and to the extent such assignment can only be made in the future hereby agrees to assign), to the other Party a joint and undivided interest in and to all Joint Program IP. (iiiiv) The Parties agree that in some instances, Joint Program IP could encompass both improvements to BIND Background Technology and improvements to AstraZeneca Background Technology or include Product Specific claims. In this event, such Joint Program IP may be split with the full agreement and co-operation of the Parties (effected through the Joint Patent Team) into BIND Program IP and AstraZeneca Program IP, provided this can be achieved without material disadvantage to either Party. (v) Subject to the terms and conditions of this Agreement (including Section 11 10 and Section 1211): (A) Each Party will be solely responsible for the Prosecution and Maintenance, and the enforcement and defense, of any Patents within its Sole Program IP, and the other Party will have no rights with respect thereto; and (B) The Prosecution and Maintenance, and the enforcement and defense, of any Patents within Joint Program IP will be jointly managed by the Parties on mutually agreeable terms to be entered into by the Parties at the time any such Patents are first filed, and all recoveries and out-of-pocket costs and expenses arising from those activities, absent further agreement, will be shared equally by the Parties (provided that sufficient advance written notice of any such costs or expenses is given to the Party not incurring same), provided that if either Party elects not to pay any such costs or expenses for any such Patent, the Parties will meet and agree upon an equitable way to treat such Patent.