Common use of Joint Inventions Clause in Contracts

Joint Inventions. (a) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the Core Countries (in European countries through a European Patent Convention application) and other countries agreed by the parties. The parties shall agree which parties shall be responsible for conducting such activities with respect to a particular Joint Invention and agree on a plan for such activities. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereof. (b) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 9.2.3(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming such Joint Intervention without the prior written consent of the other party.

Joint Inventions. (a) 12.4.1 The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the Core Countries United States, Japan and the European Union (in European countries Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties shall agree which parties shall be responsible for conducting such activities with respect to a particular Joint Invention and agree on a plan for such activities. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance countries. Subject to Section 12.4.3 below, it is understood that, after the termination of the RESEARCH PROGRAM, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed plan or a mutually agreed modification thereofcountries. (b) 12.4.2 In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 9.2.3(a) 12.4.1 above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party THIRD PARTY a license under its interest in the applicable patent application joint invention in the applicable country or patent claiming such Joint Intervention countries without the prior written consent of the other party, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.

Joint Inventions. (ai) For purposes of this Agreement, a Joint Invention shall mean any invention made by one or more of Lucent's employees, contractors, consultants or agents working on the Development Project jointly with one or more of Company's employees, contractors, consultants or agents, which Joint Invention is first conceived or first actually reduced to practice during the Development Project. (ii) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the Core Countries (in European countries through a European Patent Convention application) and other countries agreed by the parties. The parties following provisions shall agree which parties shall be responsible for conducting such activities apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a particular patent application in the United States on such Joint Invention and agree it shall notify Company whether it elects to file such application either before or at the time the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a plan for patent application on such activitiesJoint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, where applicable, community of countries. Such Party shall notify the other Party of those foreign countries, if any, in which it elects to file such patent applications. The party conducting other Party shall have the right to file patent applications on such activities Joint Inventions in all other foreign countries. (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall keep be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other party fully informed as to Party shall have the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, right to review and comment on any documents relating each such application prior to its filing, and shall furnish the Joint Invention which will filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in any a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent office at least and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days before such filing, and promptly providing of the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereofinvoice. (bF) In the event that either party wishes a Party does not wish to seek pay its share of expenses associated with a patent protection with respect to application or an issued patent in any Joint Invention outside the Core Countriescountry as specified in Section 2.03(b)(ii)(D), it such Party shall notify the other party hereto. If both parties wish Party in writing of its refusal to seek share in such expenses, and shall assign all its right, title and interest in such patent protection with respect to such Joint Invention application or issued patent in such country or countriesto the other Party, activities shall be subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or issued patent to make, have made, use, lease, sell, offer for sale and import the Licensed Product. (G) Subject to the provisions of Section 9.2.3(a) above. If only one party wishes to seek 2.03(b)(ii)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming covering such Joint Intervention without Inventions, and each Party hereby consents to the prior written consent granting of such licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, without accounting therefor to the other Party.

Joint Inventions. (ai) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the Core Countries U.S., Japan, the United Kingdom, Italy, Germany and France (in European countries through a European Patent Convention application) (collectively, "Core Countries") and other countries agreed by the parties. The parties , and unless otherwise mutually agreed, Centocor shall agree which parties shall be responsible assume responsibility for conducting such activities with respect to a particular Joint Invention the preparation and agree on a plan for such activities. The party conducting such activities filing of all patent applications in connection therewith, and shall keep the other party Biometric fully informed as to the status of such patent matters, including, without limitation, by providing the other party Biometric the opportunity, at the other partyBiometric's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the The parties will share equally all reasonable expenses and fees associated with the filing, prosecutionprosection, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereofcountries. (bii) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities they shall be subject to do so in accordance with Section 9.2.3(a12.3(b)(i) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming such Joint Intervention Invention without the prior written consent of the other party. (iii) Each of Centocor and Biometric shall keep the other fully informed as to the status of patent matters described in this Article 12, including without limitation, by providing the other the opportunity to fully review and comment on any documents as far in advance of filing dates as possible which will be filed in any patent office, and providing the other copies of any substantive documents that such party receives from such patent offices promptly after receipt, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions. Centocor and Biometric shall each reasonably cooperate with and assist the other at its own expense in connection with such activities, at the other party's request.

Joint Inventions. (aEach Party will use reasonable efforts to advise the other of a Joint Invention as provided in Section 10.2 or promptly upon such Party becoming aware of such Joint Invention. If the Invention is an Antibody Invention, it shall be assigned as provided in Section 10.1(a) The parties will cooperate and shall be prosecuted as provided in Section 10.3(e). As soon as one of the Parties concludes that it wishes to filefile a patent application covering a Joint Invention, prosecute it immediately shall inform the other Party thereof, consult about the filing procedures concerning such patent application, and maintain file such patent applications covering for the Joint Invention(s) Inventions in such countries as the JPC determines. For this purpose, such Party will provide the other Party with the determination of inventors and scope of claims as early as possible. If a Party is faced with possible loss of rights resulting from the delay necessary for such communication, such communications may take place promptly after filing a provisional or convention application. PDL will have the first right of election to file patent applications for Joint Inventions in any country in the Core Countries (in European countries through world. If PDL declines to file any such application within [ * ] after receipt of a European Patent Convention written request to do so from EXEL, then EXEL may do so. Regardless of which Party files a patent application) and other countries agreed , however, any claims covered by the parties. The parties shall agree which parties such applications shall be responsible for conducting such activities with respect to considered as part of the Joint Patents. If the Party who initially files a particular patent application covering a Joint Invention and agree on a plan for such activities. The party conducting such activities shall keep decides not to continue the other party fully informed as to the status prosecution or maintenance of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed application or patent in general or in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereof. (b) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countriesparticular country, it promptly shall notify the other party heretoParty in writing in reasonably sufficient time for such other Party to assume such prosecution and maintenance, and shall take the necessary steps and execute the necessary documents to permit such other Party to assume such prosecution or maintenance. If both parties wish The other Party shall have the right but not the obligation to seek patent protection with respect to assume such Joint Invention in such country prosecution or countries, activities shall be subject to Section 9.2.3(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming such Joint Intervention without the prior written consent of the other partymaintenance.

Joint Inventions. (aEach Party will use reasonable efforts to advise the other of a Joint Invention as provided in Section 10.2 or promptly upon such Party becoming aware of such Joint Invention. If the Invention is an Antibody Invention, it shall be assigned as provided in Section 10.1(a) The parties will cooperate and shall be prosecuted as provided in Section 10.3(e). As soon as one of the Parties concludes that it wishes to filefile a patent application covering a Joint Invention, prosecute it immediately shall inform the other Party thereof, consult about the filing procedures concerning such patent application, and maintain file such patent applications covering for the Joint Invention(s) Inventions in such countries as the JPC determines. For this purpose, such Party will provide the other Party with the determination of inventors and scope of claims as early as possible. If a Party is faced with possible loss of rights resulting from the delay necessary for such communication, such communications may take place promptly after filing a provisional or convention application. PDL will have the first right of election to file patent applications for Joint Inventions in any country in the Core Countries (in European countries through world. If PDL declines to file any such application within [ * ] after receipt of a European Patent Convention written request to do so from EXEL, then EXEL may do so. Regardless of which Party files a patent application) and other countries agreed , however, any claims covered by the parties. The parties shall agree which parties such applications shall be responsible for conducting such activities with respect to considered as part of the Joint Patents. If the Party who initially files a particular patent application covering a Joint Invention and agree on a plan for such activities. The party conducting such activities shall keep decides not to continue the other party fully informed as to the status prosecution or maintenance of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed application or patent in general or in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereof. (b) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countriesparticular country, it promptly shall notify the other party heretoParty in writing in reasonably sufficient time for such other Party to assume such prosecution and maintenance, and shall take the necessary steps and execute the necessary documents to permit such other Party to assume such prosecution or maintenance. The other Party shall have the right but not the obligation to assume such prosecution or maintenance. Antibody Inventions. Antibody Inventions initially shall be assigned to EXEL as provided in Section 10.1(a). Unless the Parties agree otherwise, EXEL shall file patent applications for the Antibody Inventions in such countries as the JPC determines. If both parties wish EXEL declines to seek patent protection with respect file any such application within [ * ] after receipt of a written request to do so from PDL, then PDL may do so. At the time that an application constituting an Antibody Patent is filed, EXEL shall promptly notify PDL in writing in reasonably sufficient time for PDL to assume the prosecution and maintenance of that Antibody Patent, and shall take the necessary steps and execute the necessary documents to permit PDL to assume such Joint Invention in such country prosecution or countries, activities shall be subject to Section 9.2.3(a) abovemaintenance. If only one party wishes PDL subsequently decides not to seek patent protection with respect continue the prosecution or maintenance of an Antibody Patent directed to such Joint Invention a Pre-Opt-In Product, in such country general or countriesin any particular country, it may filepromptly shall notify EXEL in writing in reasonably sufficient time for EXEL to assume such prosecution and maintenance, prosecute and maintain patent applications shall take the necessary steps and patents with respect thereto, at its own expenseexecute the necessary documents to permit EXEL to assume such prosecution or maintenance. In any EXEL shall have the right but not the obligation to assume such case, the party declining to participate in patent application prosecution or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming such Joint Intervention without the prior written consent of the other partymaintenance.

Joint Inventions. In the event that, in performance of this Agreement, any employee or agent of NetLogic and any employee or agent of MTI jointly Make an Invention (a) a “Joint Invention”), such inventors shall promptly make a complete written disclosure, signed by each, to their respective Technical Coordinators. The Technical Coordinators shall then promptly coordinate a review of such disclosure to determine if MTI and NetLogic would like to attempt to secure patent protection. Joint Inventions shall be jointly owned, title to all patents issued thereon shall be joint, all expense incurred in obtaining and maintaining such patents, except as provided herein, shall be equally shared, and each Party shall have the unrestricted right to license third parties will cooperate thereunder without accounting to filethe other Party. However, prosecute when the Parties meet and maintain patent applications covering discuss matters relating to obtaining legal protection for Joint Inventions, if one Party does not want to pursue filing an application on the Joint Invention(s) Inventions in any country, the Core Countries (other Party may independently pursue such protection of the Joint Inventions in European countries through a European Patent Convention application) and other countries agreed by such country on behalf of that Party only at the partiesParty’s sole expense. The parties shall agree which parties applicant Party in such country shall be responsible for conducting the sole owner of any and all resulting patents or other intellectual property rights arising from the application, and shall be entitled to all revenues derived by such activities with respect Party relating to a particular Joint Invention and agree on a plan for such activities. The party conducting such activities shall keep the issued patent or other protection; provided, however, that the other party fully informed as to Party shall have a non-transferable, non-exclusive, royalty-free license under such patent or other intellectual property protection within such country and for the status full term of such patent matters, including, without limitation, by providing the or other party the opportunity, at the other party's expenselegal protection, to review make, have made, use, sell, offer for sale, import and comment on any documents relating to market products or processes utilizing or embodying the Joint Invention which will be filed in any patent office at least thirty (30) days before such filingsubject matter claimed therein. Notwithstanding the foregoing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for if a Joint Invention in embodies Confidential Information of either Party, the Core Countries and other agreed countries in accordance with Party owning the agreed plan or Confidential Information shall have the right to exclude such Confidential Information from a mutually agreed modification thereof. (b) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to application for such Joint Invention in such country or countries, activities shall be subject to Section 9.2.3(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming such Joint Intervention without the prior written consent of the other partyInvention.

Joint Inventions. (ai) For purposes of this Agreement, a Joint Invention shall mean any invention made by one or more of Lucent's employees, contractors, consultants or agents working on the Development Project jointly with one or more of Company's employees, contractors, consultants or agents, which Joint Invention is first conceived or first actually reduced to practice during the Development Project. (ii) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the Core Countries (in European countries through a European Patent Convention application) and other countries agreed by the parties. The parties following provisions shall agree which parties shall be responsible for conducting such activities apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a particular patent application in the United States on such Joint Invention and agree it shall notify Company whether it elects to file such application either before or at the time the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a plan for patent application on such activitiesJoint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, where applicable, community of countries. Such Party shall notify the other Party of those foreign countries, if any, in which it elects to file such patent applications. The party conducting other Party shall have the right to file patent applications on such activities Joint Inventions in all other foreign countries. (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall keep be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other party fully informed as to Party shall have the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, right to review and comment on any documents relating each such application prior to its filing, and shall furnish the Joint Invention which will filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in any a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent office at least and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days before such filingof the invoice. MPhase, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereof.Inc. DEVELOPMENT AGREEMENT (bF) In the event that either party wishes a Party does not wish to seek pay its share of expenses associated with a patent protection with respect to application or an issued patent in any Joint Invention outside the Core Countriescountry as specified in Section 2.03(b)(ii)(D), it such Party shall notify the other party hereto. If both parties wish Party in writing of its refusal to seek share in such expenses, and shall assign all its right, title and interest in such patent protection with respect to such Joint Invention application or issued patent in such country to the other Party, subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or countriesissued patent to make, activities have made, use, lease, sell, offer for sale and import. Such nonexclusive licenses shall be subject for any and all products and services of the kinds furnished or used in the operation of the Party's and its Subsidiaries' businesses. (G) Subject to the provisions of Section 9.2.3(a) above. If only one party wishes to seek 2.03(b)(f)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming covering such Joint Intervention without Inventions, and each Party hereby consents to the prior written consent granting of such licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, without accounting therefor to the other Party.

Joint Inventions. (ai) For purposes of this Agreement, a Joint Invention shall mean any invention made by one or more of Lucent’s employees, contractors, consultants or agents working on the Development Project jointly with one or more of Company’s employees, contractors, consultants or agents, which Joint Invention is first conceived or first actually reduced to practice during the Development Project. (ii) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the Core Countries (in European countries through a European Patent Convention application) and other countries agreed by the parties. The parties following provisions shall agree which parties shall be responsible for conducting such activities apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a particular patent application in the United States on such Joint Invention and agree it shall notify Company whether it elects to file such application either before or at the time the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a plan for patent application on such activitiesJoint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, where applicable, community of countries. Such Party shall notify the other Party of those foreign countries, if any, in which it elects to file such patent applications. The party conducting other Party shall have the right to file patent applications on such activities Joint Inventions in all other foreign countries. Back to Contents (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall keep be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other party fully informed as to Party shall have the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, right to review and comment on any documents relating each such application prior to its filing, and shall furnish the Joint Invention which will filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in any a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent office at least and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days before such filing, and promptly providing of the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereofinvoice. (bF) In the event that either party wishes a Party does not wish to seek pay its share of expenses associated with a patent protection with respect to application or an issued patent in any Joint Invention outside the Core Countriescountry as specified in Section 2.03(b)(ii)(D), it such Party shall notify the other party hereto. If both parties wish Party in writing of its refusal to seek share in such expenses, and shall assign all its right, title and interest in such patent protection with respect to such Joint Invention application or issued patent in such country or countriesto the other Party, activities shall be subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or issued patent to make, have made, use, lease, sell, offer for sale and import the Licensed Product. (G) Subject to the provisions of Section 9.2.3(a) above. If only one party wishes to seek 2.03(b)(ii)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. Back to Contents (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming covering such Joint Intervention without Inventions, and each Party hereby consents to the prior written consent granting of such licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, without accounting therefor to the other Party.

Joint Inventions. (ai) For purposes of this Agreement, a Joint Invention shall mean any invention made by one or more of Lucent's employees, contractors, consultants or agents working on the Development Project jointly with one or more of Company's employees, contractors, consultants or agents, which Joint Invention is first conceived or first actually reduced to practice during the Development Project. (ii) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the Core Countries (in European countries through a European Patent Convention application) and other countries agreed by the parties. The parties following provisions shall agree which parties shall be responsible for conducting such activities apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a particular patent application in the United States on such Joint Invention and agree it shall notify Company whether it elects to file such application either before or at the time the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a plan for patent application on such activitiesJoint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, where applicable, community of countries. Such Party shall notify the other Party of those foreign countries, if any, in which it elects to file such patent applications. The party conducting other Party shall have the right to file patent applications on such activities Joint Inventions in all other foreign countries. (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall keep be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other party fully informed as to Party shall have the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, right to review and comment on any documents relating each such application prior to its filing, and shall furnish the Joint Invention which will filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in any a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent office at least and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days before such filingof the invoice. MPhase, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereof.Inc. DEVELOPMENT AGREEMENT (bF) In the event that either party wishes a Party does not wish to seek pay its share of expenses associated with a patent protection with respect to application or an issued patent in any Joint Invention outside the Core Countriescountry as specified in Section 2.03(b)(ii)(D), it such Party shall notify the other party hereto. If both parties wish Party in writing of its refusal to seek share in such expenses, and shall assign all its right, title and interest in such patent protection with respect to such Joint Invention application or issued patent in such country to the other Party, subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or countriesissued patent to make, activities have made, use, lease, sell, offer for sale and import. Such nonexclusive licenses shall be subject for any and all products and services of the kinds furnished or used in the operation of the Party's and its Subsidiaries' businesses. (G) Subject to the provisions of Section 9.2.3(a) above. If only one party wishes to seek 2.03(b)(ii)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party a license under its interest in the applicable patent application or patent claiming covering such Joint Intervention without Inventions, and each Party hereby consents to the prior written consent granting of such licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, without accounting therefor to the other Party.

Joint Inventions. (a) The parties PDL will cooperate have the first right of election to file, prosecute and maintain file priority patent applications covering the for Joint Invention(s) Inventions in any country in the Core Countries (in European countries through world. If PDL declines to file such applications then Roche may do so. Regardless of which party files a European Patent Convention priority patent application) and other countries agreed , however, any claims covered by the parties. The parties shall agree which parties such applications shall be responsible considered as part of the PDL Patents for conducting such activities with respect to the purpose of defining a particular Joint Invention Valid Claim under this Amended and agree on a plan for such activities. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereofRestated Agreement. (b) In The party not performing the event priority patent filings for Joint Inventions pursuant to this Section 9.2 undertakes without cost to the filing party to obtain all necessary assignment documents for the filing party, to render all signatures which shall be necessary for such patent filings and to assist the filing party in all other reasonable ways which are necessary for the issuance of the patents involved as well as for the maintenance and prosecution of such patents. The party not performing the patent filings shall upon request be authorized by the other party to have access to the files concerning such patents in any patent offices in the world. (c) The party performing the priority patent filings for Joint Inventions pursuant to this Section 9.2 undertakes to perform the corresponding convention filings from case to case, after having discussed the countries for foreign filings with the other party at its cost and expense; except for the costs and expenses of foreign filings for such patents which are to be borne by Roche in accordance with Section 7.2 of this Amended and Restated Agreement and the terms of the ▇. ▇▇▇▇▇ Agreement. (d) Should the responsible party decide that either party wishes to seek patent protection with respect to any it is no longer interested in maintaining or prosecuting a Joint Invention outside the Core CountriesRoche-PDL Patent, it shall notify promptly advise the other party heretothereof. Upon the written request of such other party, such Joint Roche-PDL Patent shall be assigned to the other party at no cost to the assignee. If both parties wish any such patents or patent applications are assigned to seek patent protection with respect Roche, they shall then be deemed to be a Sole Roche Patent and, to the extent such Joint Invention in such country or countriesRoche-PDL Patent contains claims outside the Field, activities PDL and its Affiliates shall be subject to Section 9.2.3(a) abovehave a worldwide immunity from suit thereunder. If only one party wishes any such patents or patent applications are assigned to seek patent protection with respect PDL, they shall then be deemed to be a Sole PDL Patent and, to the extent such Joint Invention in such country or countriesRoche-PDL Patents contain claims outside the Field, it may file, prosecute Roche and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in patent application or patent relating to such activities Affiliates shall not grant any third party have a license under its interest in the applicable patent application or patent claiming such Joint Intervention without the prior written consent of the other partyworldwide immunity from suit thereunder.

Joint Inventions. (a) 12.4.1 The parties will cooperate to file, prosecute prosecute, and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the Core Countries United States, Japan, and the European Union (in European countries Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties LICENSEE shall agree which parties shall be responsible for conducting such activities with respect to a particular Joint Invention and agree on a plan for such activities. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of pay all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance issuance, and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries in accordance with the agreed plan or a mutually agreed modification thereofcountries. (b) 12.4.2 In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 9.2.3(a) 12.4.1 above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute prosecute, and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions, and/or agreements (e.g., the Patent Cooperation Treaty) to obtain the benefits afforded thereby. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any third party THIRD PARTY a license under its interest in the applicable patent application joint invention in the applicable country or patent claiming such Joint Intervention countries without the prior written consent of the other party, which shall not be unreasonably withheld. SKI agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.