Common use of Joint Inventions Clause in Contracts

Joint Inventions. As regards any joint invention by the Parties hereunder, the Party from whom the majority of the data underlying any such joint invention arose (the “controlling Party”) will have the first right, but not the obligation, to undertake filing(s), prosecution and maintenance of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) and the Parties will, prior to filing of the patent application, agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably in advance of filing, and (ii) will keep the non-controlling Party reasonably informed of the status of such filing, prosecution and maintenance, including, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the Party from whom the majority of the data underlying any such joint invention fails to undertake the filing(s) of any such patent application with respect to any such invention within [***] days after receipt of written notice from the other Party that the other Party believes filing(s) of such an application by such Party is appropriate, such other Party may undertake such filing(s) at its own expense, in which case the non-filing Party will assign all of its rights to such joint invention to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent to the other Party, who will then have the right, in its discretion, to assume the filing, prosecution and/or maintenance thereof as the sole owner thereof and at its sole cost and expense.

Joint Inventions. As regards any joint invention by 9.2.1 The Parties shall jointly determine which Party will control the Parties hereunder, the Party from whom the majority of the data underlying any such joint invention arose (the “controlling Party”) will have the first right, but not the obligation, to undertake filing(s), prosecution procurement and maintenance of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) and the Parties will, prior to filing of the patent application, agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably in advance of filing, and (ii) will keep the non-controlling Party reasonably informed of the status of such filing, prosecution and maintenance, including, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the Party from whom the majority of the data underlying any such joint invention fails to undertake the filing(s) of any such patent application with respect to any such invention within [***] days after receipt of written notice from the other Party that the other Party believes filing(s) of such an application by such Party is appropriate, such other Party may undertake such filing(s) at its own expense, in which case the non-filing Party will assign all of its rights to such joint invention to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent claiming a Joint Invention (a "New Patent"). Unless otherwise agreed upon in writing, procurement and maintenance costs of any New Patent shall be equally paid by BioCurex and Inverness. 9.2.2 Each Party may use any Joint Invention for research purposes without payment of royalties or duty to account to the other Party. If either Party commercializes any product (other than a Product), who will the use, manufacture or sale of which is claimed by an unexpired claim of a New Patent (which claim has not been abandoned, finally disallowed or declared invalid or unenforceable), then such Party shall pay to the other Party a royalty of 5% of Net Sales of such product, payable quarterly in U.S. dollars. All such payments shall be accompanied by a royalty report showing the basis for calculating royalties payable under this Section, with no less detail than the reports required under Section 0 hereof. 9.2.3 Except as otherwise set forth herein, neither Party shall transfer, license or encumber its rights in any Joint Invention (or the patent and other intellectual property rights therein) without the written consent of the other party. Neither Party shall withhold or fail to give its consent to license any Joint Invention (a) in order to renegotiate the terms set forth in this Agreement, or (b) other than in good faith, and any Party withholding or failing to give such consent shall provide the other Party with the reasons, in writing, for the denial. Should a Party find those reasons insufficient, it shall have the right, right to seek resolution of the dispute in its discretion, to assume accordance with the filing, prosecution and/or maintenance thereof as the sole owner thereof and at its sole cost and expenseterms of this Agreement.

Joint Inventions. As regards any joint invention (a) Inventions developed, conceived or first reduced to practice, as those terms are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly by the Parties hereunderparties (the "Joint Inventions"), will be jointly owned by the parties, each party having an equal and undivided interest therein, without the duty to account to the other for any use made of such Joint Inventions. Notwithstanding the foregoing, neither party may use the Joint Inventions in any way which would harm the other's ownership interest therein. The parties agree to mutually determine whether a patent application or applications will be filed on such Joint Inventions, the Party from whom party which will prepare and file such application or applications, and the majority country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the parties. (b) If the parties are not able to mutually agree to file an application or applications on a Joint Invention, either one of the data underlying any parties may elect to assume such joint invention arose expenses (the “controlling "Electing Party”) will have the first right, but not the obligation, to undertake filing(s"), prosecution and maintenance of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing The Electing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) control the preparation and the Parties will, prior to filing of the patent application, agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably all rights in advance of filing, and (ii) any patents granted thereon will keep belong exclusively to the non-controlling Party reasonably informed Electing Party. The party declining to bear its share of the status expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such filing, prosecution and maintenance, includingDeclining Party will *** *** or the U.S. Government. Neither party may, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the Party from whom the majority consent of the data underlying other party (which consent may be withheld for any such joint invention fails to undertake the filing(s) of any such patent application with respect to any such invention within [***] days after receipt of written notice from the other Party that the other Party believes filing(s) of such an application by such Party is appropriate, such other Party may undertake such filing(s) at its own expense, in which case the non-filing Party will assign all of its rights to such joint invention to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent to the other Party, who will then have the rightreason, in its sole and absolute discretion), to assume the filingassign or otherwise transfer its interest in any Joint Invention, prosecution and/or maintenance thereof except as the sole owner thereof and at its sole cost and expenseexpressly provided herein.

Joint Inventions. As regards any joint invention (a) Inventions developed, conceived or first reduced to practice, as those terms are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly by the Parties hereunderparties (the "Joint Inventions"), will be jointly owned by the parties, each party having an equal and undivided interest therein, without the duty to account to the other for any use made of such Joint Inventions. Notwithstanding the foregoing, neither party may use the Joint Inventions in any way which would harm the other's ownership interest therein. The parties agree to mutually determine whether a patent application or applications will be filed on such Joint Inventions, the Party from whom party which will prepare and file such application or applications, and the majority country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the *** Portions of this page have been omitted to a request for Confidential Treatment and filed separately with the commission. parties. (b) If the parties are not able to mutually agree to file an application or applications on a Joint Invention, either one of the data underlying any parties may elect to assume such joint invention arose expenses (the “controlling "Electing Party”) will have the first right, but not the obligation, to undertake filing(s"), prosecution and maintenance of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing The Electing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) control the preparation and the Parties will, prior to filing of the patent application, agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably all rights in advance of filing, and (ii) any patents granted thereon will keep belong exclusively to the non-controlling Party reasonably informed Electing Party. The party declining to bear its share of the status expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** *** ; provided further, however, that such filing, prosecution and maintenance, includingDeclining Party will *** *** or the U.S. Government. Neither party may, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the Party from whom the majority consent of the data underlying other party (which consent may be withheld for any such joint invention fails to undertake the filing(s) of any such patent application with respect to any such invention within [***] days after receipt of written notice from the other Party that the other Party believes filing(s) of such an application by such Party is appropriate, such other Party may undertake such filing(s) at its own expense, in which case the non-filing Party will assign all of its rights to such joint invention to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent to the other Party, who will then have the rightreason, in its sole and absolute discretion), to assume the filingassign or otherwise transfer its interest in any Joint Invention, prosecution and/or maintenance thereof except as the sole owner thereof and at its sole cost and expenseexpressly provided herein.

Joint Inventions. 6.1. As regards any joint invention by between the Parties hereunderParties, all right, title and interest to inventions and other subject matter (together with all intellectual property rights therein) conceived or created or first reduced to practice (in the Party from whom case of patentable inventions) or made or developed (in the majority case of the data underlying any such joint invention arose non-patentable inventions) in connection with this Agreement (the “controlling PartyInventions”) will have the first right, but not the obligation, to undertake filing(s), prosecution and maintenance of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) and the Parties will, prior to filing of the patent application, agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide by or under the non-controlling Party with a copy authority of any such proposed patent application for review Lithera or its Affiliates, independently of NovaMedica and comment reasonably in advance of filingits Affiliates, and shall be owned by Lithera, (ii) by or under the authority of NovaMedica or its Affiliates, independently of Lithera and its Affiliates, shall be owned by NovaMedica and (iii) that are invented jointly by personnel of Lithera or its Affiliates, on the one hand, and NovaMedica or its Affiliates, on the other hand, will keep the nonbe owned jointly by Lithera and NovaMedica (“Joint Inventions”), and subject to Section 6.7 below, each Party shall retain an undivided one-controlling Party reasonably informed of the status of half interest in and to such filing, prosecution and maintenanceJoint Inventions, including, without limitation, (A) by providing any patents resulting therefrom, with full ownership rights in and to any field and including the non-controlling right to practice, assign, license, or otherwise exploit such Joint Inventions, in each case, without any obligation to obtain the approval of the other Party, nor to pay to the other Party with copies any share of all communications received the proceeds from or filed in otherwise account to the other Party for such activities, and each Party hereby waives any right it may have under the Laws of any country to require such approval, sharing or accounting. 6.2. Each Party shall promptly disclose to the other any invention disclosures, or other similar documents, submitted to it by its employees, agents or independent contractors describing subject matter that are purported to be Joint Inventions. 6.3. Upon the identification of a Joint Invention, the JDC shall (i) promptly discuss such Joint Invention, (ii) promptly discuss the desirability of filing a PCT patent office(s) with respect to application covering such filingJoint Invention, and (Biii) by providing make the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the Party from whom the majority of the data underlying any such joint invention fails to undertake the filing(s) of any such patent application final decision with respect to any such invention within [***] days after receipt of written notice from filings as soon as practicable, it being understood that in the other Party event that the other Party believes filing(s) of such an application by such Party is appropriate, such other Party may undertake such filing(s) at its own expense, in which case the non-filing Party will assign all of its rights to such joint invention to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent to the other Party, who will then have the right, in its discretion, to assume the filing, prosecution and/or maintenance thereof as the sole owner thereof and at its sole cost and expense.JDC cannot

Joint Inventions. As regards any joint invention (1) Any Inventions that are conceived, reduced to practice or created under this Agreement that are not NuPathe Inventions or LTS Inventions shall be jointly owned by the Parties hereunder(‘Joint Inventions”). (2) Each of LTS and NuPathe will promptly disclose to the other in writing any Invention that might, under the applicable patent laws, be patentable and constitute a Joint Invention that would be owned by, or jointly owned with, the Party from whom the majority of the data underlying any such joint invention arose other party pursuant to this Section 9.03. With respect to all patent applications (including amendments, continuations or continuations in part) related to Joint Inventions (the “controlling Joint Patent Applications”), the Parties shall determine which Party shall be responsible for filing, prosecuting, maintaining and defending patent applications and patents on behalf of both Parties (the “Responsible Party”) will have based on a good faith determination of the first right, but not relative contributions of the obligation, Parties to undertake filing(s), prosecution and maintenance of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) invention and the relative level of interest of the Parties will, in the Invention. At least twenty (20) days prior to the contemplated filing of the such patent application, agree on mutually acceptable sharing the Responsible Party shall submit a substantially completed draft of the costs Joint Patent Applications to the other Party and expenses of provide such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably in advance of filing, and (ii) will keep the non-controlling Party reasonably informed of the status of such filing, prosecution and maintenance, including, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the Party from whom the majority of the data underlying comment on any such joint invention fails documents prior to undertake filing. The Responsible Party shall also promptly provide the filing(s) other Party with copies of any substantive prosecution correspondence received directly or indirectly from a patent office or from local patent counsel assisting with patent prosecution of such patent application applications and the other Party shall have an opportunity to review and comment on any response thereto. The Responsible Party will consider in good faith the other Party’s comments and suggestions with respect to Joint Patent Applications and/or substantive prosecution correspondence and shall use its Commercially Reasonable Efforts to prepare, file, prosecute and maintain Joint Patents, in the Territory that provide the broadest possible coverage for the Product and shall not take any actions that would lessen or minimize coverage without the other Party’s prior written approval. (3) Any Joint Patent Applications shall be filed and registered in the name of LTS and NuPathe. Except as set forth below, the Parties shall share equally the costs of the preparation, filing, prosecution and maintenance of all Joint Patent Applications. (4) If the Responsible Party does not wish to file, prosecute or maintain any Joint Patent Application or maintain or defend such invention within [***] days after receipt of written notice from a patent in a particular country, it shall grant the other Party that any necessary authority to file, prosecute and maintain such a patent application or maintain or defend such a patent in the name of both Parties. (5) If either Party elects not to pay its portion of any shared costs for a Joint Patent Application or patent issuing therefrom, the other Party believes filing(s) of may proceed with such an application by such Party is appropriate, such other Party may undertake such filing(s) Joint Patent Application in its own name and at its own sole expense, in which case the non-filing Party will electing not to pay its share of costs shall assign all of its rights entire right, title and interest in and to such joint invention to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent Joint Patent Application to the other Party, who will then have Party and such invention shall be treated as a sole Invention of the right, in its discretion, to assume the filing, prosecution and/or maintenance thereof as the sole owner thereof and at its sole cost and expenseassignee.

Joint Inventions. As regards any joint invention All Inventions that are not ▇▇▇▇▇▇▇ Inventions or Idenix Inventions (the “Joint Inventions”) shall be jointly owned by the Parties hereunderand each Party will have the full right to exploit such Joint Inventions without the consent of, or any obligation to account to, the other Party. (i) If the Parties agree to file a Patent on a Joint Invention, the Parties shall select either (A) a Party from whom or (B) mutually acceptable outside patent counsel to act on behalf of both Parties in the majority preparation, filing, prosecution (including any proceedings relating to reissues, reexaminations, protests, interferences and requests for Patent extensions) and maintenance of the data underlying any Patents covering such joint invention arose Joint Inventions (each a “Joint Patent”). The Parties shall agree in writing on which Party shall be responsible for each Joint Patent or set of Joint Patents, or shall have primary responsibility for interacting with and instructing outside patent counsel, if applicable, and may switch such election upon mutual written agreement. In each case, such selected Party (the “controlling Prosecuting Party”) shall keep the other Party (the “Non-Prosecuting Party”) advised as to material developments and all steps to be taken with respect to any such Patents and shall furnish the Non-Prosecuting Party, sufficiently in advance for the other Party to comment, with copies of all patent applications and other material submissions and correspondence with any patent counsel or patent authorities pertaining to the Joint Patents. The Prosecuting Party will give due consideration to the comments of the Non-Prosecuting Party. The Non-Prosecuting Party shall reasonably assist and cooperate in obtaining, prosecuting and maintaining the Joint Patents. Notwithstanding the foregoing, the Prosecuting Party shall not take any position in a submission to a Patent office that interprets the scope of a Joint Patent without the prior written consent of such Non-Prosecuting Party. The Prosecuting Party shall be reimbursed for the reasonable and verifiable costs incurred in prosecuting Joint Patents and the subsequent maintenance of Joint Patents by the Prosecuting Party, but not including any costs incurred by the Prosecuting Party with regard to its internal counsel and other internal personnel, such that Idenix shall be responsible for [**] percent ([**]%) of such costs and ▇▇▇▇▇▇▇ shall be responsible for [**] percent ([**]%) of such costs, with such payments being due by the Non-Prosecuting Party within [**] days after receiving an invoice. If the Prosecuting Party intends to allow any Joint Patent to lapse or to abandon any Joint Patent, the Prosecuting Party shall, whenever practicable, notify the Non-Prosecuting Party of such intention at least [**] days prior to the date upon which such Joint Patent shall lapse or become abandoned, and the Non-Prosecuting Party shall thereupon have the first right, but not the obligation, to undertake filing(sassume full responsibility for the prosecution, maintenance and defense thereof and all expenses related thereto and such Joint Patent shall thereafter become the sole property of such Non-Prosecuting Party, provided that the Prosecuting Party shall retain a worldwide, royalty-free, perpetual, irrevocable non-exclusive license to such Patent, with the right to sublicense to Affiliates, solely for the purpose of continuing such Party’s independent development, commercialization and other exploitation of its Single Agent Compound (alone or in combination with other pharmaceutical agents), prosecution and maintenance subject to the provisions of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) and the Parties will, prior to filing Section 8.4 of the patent application, agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably in advance of filing, and this Agreement. (ii) will keep If one Party wishes to file a Joint Patent and the non-controlling other Party reasonably informed of does not, the status of such filing, prosecution and maintenance, including, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or filed in patent office(s) with respect wishing to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining file shall have the right to pursue elect to do so at its own expense and the other Party shall execute such subject matter documents and perform such acts at its own expense as may be reasonably necessary to effect an assignment of its rights in such Joint Patent to the electing Party in a separate application, or timely manner so as to allow the failure electing Party to file such Joint Patent. The other Party shall cooperate fully and provide the electing Party with any documents, information or perfect the filing of any claim(s) in any country), with prior written notice of assistance reasonably necessary to file such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and commentJoint Patent. If the electing Party from whom is Idenix, the majority of Joint Patent shall be deemed an Idenix Patent, and if the data underlying any such joint invention fails to undertake electing Party is ▇▇▇▇▇▇▇, the filing(s) of any such patent application with respect to any such invention within [***] days after receipt of written notice from Joint Patent shall be deemed a ▇▇▇▇▇▇▇ Patent, provided that in each case the other Party that the other Party believes filing(s) of such an application by such Party is appropriateshall retain a worldwide, such other Party may undertake such filing(s) at its own expense, in which case the royalty-free non-filing Party will assign all exclusive license to such Patent, with the right to sublicense to Affiliates, solely for the purpose of continuing such Party’s independent development, commercialization and other exploitation of its rights to such joint invention Single Agent Compound (alone or in combination with other pharmaceutical agents), subject to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent to the other Party, who will then have the right, in its discretion, to assume the filing, prosecution and/or maintenance thereof as the sole owner thereof and at its sole cost and expenseprovisions of Section 8.4 of this Agreement.