Common use of Background Inventions Clause in Contracts

Background Inventions. Background Invention means any Invention in which the Recipient or sub-Recipients of any tier has retained title that (1) was not conceived or first actually reduced to practice in the performance of work under this Agreement and (2) was developed at private expense, either exclusively or partially. The Parties agree to the following: 1. With respect to any Background Invention incorporated into Deliverables or otherwise made available to the Government under this Agreement, the Government shall have a royalty-free, nonexclusive and irrevocable right to reproduce, publish, or otherwise use the work for any Government purpose, and to authorize others to do so. 2. Incorporated into this Agreement as Attachment 4, the Recipient has disclosed in good faith a table of asserted Background Inventions that identifies for each Background Invention a minimum of the following: a. The US Patent or patent application covering the Background Invention; and b. The work products to be delivered under this Agreement that incorporate the Background Invention. 3. Any Invention arising under this Agreement or incorporated into work products delivered or otherwise made available to the Government under this Agreement shall be considered a Subject Invention if such Invention has not been asserted by the Recipient to be a Background Invention in Attachment 4. 4. In addition to the assertions made at the time of the execution of this Agreement, other asserted Background Inventions may be identified and added to Attachment 4 after award via mutual agreement of the Parties when based on new information or inadvertent omissions, unless the inadvertent omissions would have materially affected the NIH’s decision to execute this Agreement.