Common use of Derivative Technology Clause in Contracts

Derivative Technology. 5.3.1 Inktomi Derivative Technology will be owned exclusively by Inktomi and treated in the same manner as Inktomi Technology under this Section 5, except as follows: (a) Inktomi will not make available any Inktomi Derivative Technology or any search engine features implemented thereby to any third party search engine customer for a period of not less than [*] ([*]) years commencing on the incorporation of the final (not "beta") version of the Inktomi Derivative Technology into the Microsoft Search Engine. After the expiration of said [*] ([*]) year exclusivity period, Inktomi will have the right to use the Inktomi Derivative Technology in other versions of the Inktomi Search Engine, but if Inktomi so uses any Inktomi Derivative Technology it will pay to Microsoft, in [*], an amount equal to [*] of the amounts Microsoft paid for development of such Inktomi Derivative Technology pursuant to Section 2.1.1 above, but except for such payments Inktomi will not owe any royalties or other amounts to Microsoft for any use of the Inktomi Derivative Technology; and (b) Inktomi hereby grants to Microsoft a non-exclusive and irrevocable, fully paid-up, license under any and all patents that Inktomi may own related to any portion of the Inktomi Derivative Technology, throughout the Territory for the applicable life of the respective patent; provided, however, that nothing contained in this clause (b) shall be deemed to require Inktomi to deliver any code to Microsoft. 5.3.2 Each of Inktomi and Microsoft will own an [*] ([*]) interest in and to all Joint Derivative Technology, at all stages of development, and the parties hereby assign to each other such individual rights therein as necessary to effectuate said [*] ownership relationship. Subject to the other rest of this Section 5.3.2, each party shall have the right to use Joint Derivative Technology as each may determine (including creating other derivative works based thereon) without any limitation or necessity to account to the other. However, Inktomi will not make available any Joint Derivative Technology or any search engine features implemented thereby to any third party search engine customer for a period of not less than [*] ([*]) years commencing on the incorporation of the final (not "beta") version of the Joint Derivative Technology into the Microsoft Search Engine. After the expiration of said [*] ([*]) year exclusivity period, Inktomi will have the right to use the Joint Derivative Technology in other versions of the Inktomi Search Engine, but if Inktomi so uses any Joint Derivative [*]=CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. Technology it will pay to Microsoft, in [*], an amount equal to [*] of the amounts Microsoft paid for development of such Joint Derivative Technology pursuant to Section 2.1.1 above, but except for such payments by Inktomi to Microsoft, and the payments by Microsoft to Inktomi pursuant to Section 2.1.2 above, neither Microsoft nor Inktomi will owe any royalties or other amounts to the other for any of their respective uses of the Joint Derivative Technology. Each party will have the right to file registrations, and prosecute infringements, relating to the Joint Derivative Technology, but will consult with the other party before doing so, and will cooperate with the other should it desire joint filings or prosecutions. 5.3.3 Subject to Section 5.3.4 below, as between Microsoft and Inktomi, Microsoft will own all rights in and to the Microsoft Derivative Technology. (a) Inktomi acknowledges and agrees that, insofar as Inktomi is concerned, the Microsoft Derivative Technology has been specially ordered and commissioned by Microsoft and are "works made for hire" for copyright purposes, with all copyrights in the Microsoft Derivative Technology owned by Microsoft. (b) To the extent (if any) that any Microsoft Derivative Technology does not qualify as a work made for hire under applicable law, and to the extent that the Microsoft Derivative Technology includes material subject to copyright, patent, trade secret, or other proprietary right protection, Inktomi hereby assigns to Microsoft, its successors and assigns, all right, title and interest in and to the Microsoft Derivative Technology, including, but not limited to, all rights in and to any inventions and designs embodied in the Microsoft Derivative Technology or developed in the course of Inktomi's creation of the Microsoft Derivative Technology. The foregoing assignment includes a license under any current and future patents owned or licensable by Inktomi to the extent necessary to combine the Microsoft Derivative Technology with any hardware and software. (c) Inktomi hereby irrevocably transfers and assigns to Microsoft any and all "moral rights" that Inktomi may have in the Microsoft Derivative Technology. Inktomi also hereby forever waives and agrees never to assert any and all "moral rights" it may have in the Microsoft Derivative Technology, even after termination of the Services. 5.3.4 Microsoft hereby grants to Inktomi a non-exclusive license to incorporate Microsoft Derivative Technology into the Product, as contemplated by the development process hereunder, provided that Inktomi may not itself use, nor authorize any third party's use of, the Microsoft Derivative Technology portion of the Product without Microsoft's prior written approval (which Microsoft may give or withhold in its sole and absolute discretion, and which may be conditioned, without limitation, upon a royalty or other fee being payable to Microsoft). [*]=CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.