Common use of Research Intellectual Property Clause in Contracts

Research Intellectual Property. “Research Intellectual Property” means the legal rights relating to inventions (including Subject Inventions as defined in 37 CFR 401), patent applications, patents, copyrights, trademarks, mask works, trade secrets and any other legally protectable information, including computer software, first made or generated during the performance of a Research Task Order. The Parties mutually agree that any Research Intellectual Property made or conceived in the performance of a Research Task Order shall be owned in accordance with the following criteria: Sponsor exclusively owns title to any Research Intellectual Property made or conceived solely by Sponsor employees in the performance of a Research Task Order. For the avoidance of doubt, ownership of any of University’s Confidential Information (as defined herein) contained in Sponsor owned Research Intellectual Property is retained by University. KSURF exclusively owns title to any Research Intellectual Property made or conceived solely by University employees in the performance of a Research Task Order. For the avoidance of doubt, ownership of any of Sponsor’s Confidential Information (as defined herein) contained in KSURF owned Research Intellectual Property is retained by Sponsor. KSURF and Sponsor shall jointly own title to any Research Intellectual Property that is made or conceived by one or more employees of University and one or more employees of Sponsor in the performance of a Research Task Order. K-State and Sponsor shall notify the other Party of any Research Intellectual Property it develops promptly after an invention disclosure regarding such Intellectual Property. For the purpose of clarity, these invention disclosures shall be considered Confidential Information of the disclosing Party. KSURF and Sponsor have the right to file and prosecute intellectual property applications on any Research Intellectual Property to which it holds exclusive title and/or jointly owned Research Intellectual Property so long as such filing and prosecution does not conflict with the confidentiality obligations of Clause 14 – CONFIDENTIALITY/ PUBLICATIONS of this Agreement. Each Party shall have the independent, unrestricted right to license any jointly owned Research Intellectual Property to third parties without accounting to the other Party, except that Sponsor shall be entitled to an exclusive first option to negotiate for an exclusive commercial license to KSURF’s interest in jointly owned Research Intellectual Property and KSURF owned Research Intellectual Property as described under Clause 12 – LICENSE TO RESEARCH INTELLECTUAL PROPERTY below, subject to any rights of the U.S. Government therein.