Joint IP. The Parties will jointly own any and all Know-How and Patents arising therefrom that are discovered, created, conceived, developed or reduced to practice jointly by or on behalf of the Parties under or in connection with this CCPS Agreement, including as part of the Development & U.S. Commercialization Program (“Joint IP”). Each Party will have an undivided one-half interest in and to Joint IP. Each Party will exercise its ownership rights in and to such Joint IP, including the right to license and sublicense or otherwise to exploit, transfer or encumber its ownership interest, without an accounting or obligation to, or consent required from, the other Party, but subject to the licenses hereunder and the other terms and conditions of this CCPS Agreement, including Section 10.4. At the reasonable written request of a Party, the other Party will in writing grant such consents and confirm that no such accounting is required to effect the foregoing regarding Joint IP. Each Party, for itself and on behalf of its Affiliates, licensees and sublicenses, and employees, subcontractors, consultants and agents of any of the foregoing, hereby assigns (and to the extent such assignment can only be made in the future hereby agrees to assign), to the other Party a joint and undivided interest in and to all Joint IP. The Prosecution and Maintenance, and the enforcement and defense, of any Patents within Joint IP will be jointly managed by the Parties on mutually agreeable terms to be entered into by the Parties at the time any such Patents are first filed, provided that (i) all recoveries and Patent Costs arising from the enforcement or defense of any Patents within Joint IP, absent further CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. agreement, will be shared by the Parties in accordance with Section 14.2 (provided that sufficient advance written notice of any such Patent Costs is given to the Party not incurring same) and (ii) Patent Costs incurred in connection with the Prosecution and Maintenance of Patents within Joint IP will be apportioned as set forth in Sections 13.1 and 13.3, provided that in each case ((i) and (ii)), and all recoveries and Patent Costs arising from...
Joint IP. The Parties shall each own an equal, undivided interest in: (a) any and all Know-How that is created, conceived, discovered, first generated, invented, first made or first reduced to practice, in each case, jointly by or on behalf of Prothena or its Affiliates, on the one hand, and Celgene or its Affiliates, on the other hand, pursuant to the conduct of activities under this Agreement at any time during the Term (the “Joint Know-How”), and (b) any Patents that claim any Joint Know-How (the “Joint Patents”, together with Joint Know-How the “Joint IP”). Each Party shall assign, and hereby assigns, to the other Party, a joint equal and undivided interest in and to such Joint IP (provided, however, that for clarity, the foregoing joint ownership rights with respect to Joint IP shall not be construed as granting, conveying or creating any license or other rights to any of the other Party’s other intellectual property, unless otherwise expressly set forth in this Agreement), and at the request of a Party, the other Party will execute such documents (including any necessary assignments) to effect such joint ownership of such Joint IP. Each Party shall have the right to disclose (except as otherwise set forth in Section 7.2) and exploit the Joint IP without a duty of seeking consent or accounting to the other Party except as expressly provided in this Agreement; provided that, such rights shall be subject to the rights and licenses granted to Celgene and Prothena hereunder (or under the Master Collaboration Agreement, any Global License Agreement or any other U.S. License Agreement), including the obligations of Prothena as set forth in Article 4.
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Joint IP. The Parties shall confer in good faith regarding any decision to file, prosecute or maintain any Joint IP, and neither Party shall assign, license, or Exploit any Joint IP without the consent of the other Party except as otherwise permitted under this Agreement. For clarity, to the extent any Joint IP constitutes any Licensed Patents or Licensed Know-How, such Licensed Patents and Licensed Know-How will be subject to the license granted to Erasca pursuant to Section 2.1 (Grant).
Joint IP. With prior consultation to Toshiba and SanDisk, Intermolecular shall have the initial right, but not the obligation, to take reasonable legal action to enforce Intellectual Property Rights in any Joint IP against commercially material infringements. If Intermolecular does not take action sufficient to halt such infringement within [*] following receipt of notice of such infringement, then either Toshiba or SanDisk, as applicable, shall have the right, but not the obligation, to take action to stop such infringement at its sole expense. Notwithstanding the foregoing, if Toshiba and SanDisk elect to receive [*] license under Section 4.2 below, then either Toshiba or SanDisk, as applicable based on inventorship or upon written agreement between Toshiba and SanDisk, shall have the initial right, but not the obligation, to take reasonable legal action to enforce any Intellectual Property Rights in Joint IP against commercially material infringements.
Joint IP. MSI and Xxxxxxxxx shall cooperate in good faith in the filing, prosecution, and maintenance of patents relating to any and all Joint IP. Either party can file, prosecute, and maintain any such patent without the agreement of the other party provided such party pays all costs associated with such filing, prosecution, and maintenance.
Joint IP. Subject to the licenses granted hereunder, neither Party shall have an obligation to account to the other, or obtain the consent of the other, with respect to the exploitation (directly or through licensees or other Third Parties) of any Jointly-Owned IP, and each Party hereby waives any right it may have under the laws of any jurisdiction to require such an accounting or consent. Neither Party will abandon or assign Jointly-Owned IP prior to offering the other Party the right to acquire its interest in such Jointly-Owned IP, except that a Party may assign its interest in Jointly-Owned IP to an Affiliate so long as such assignment is subject to the licenses granted pursuant to this Agreement and is otherwise consistent with this Agreement. Subject to the foregoing, each Party shall have the right to abandon its interest in the Jointly-Owned IP, or to assign, license or otherwise transfer its interest in the Jointly-Owned IP to any Third Party without the consent of the other Party so long as such sale, license or transfer is subject to the licenses granted pursuant to this Agreement and is otherwise consistent with this Agreement.
Joint IP. In the event that any Jointly-Owned IP is infringed or misappropriated by a Third Party, Sobi and Biogen Idec shall discuss whether, and if so, how, to enforce such Jointly-Owned IP or defend such Jointly-Owned IP (whether in an infringement action, declaratory judgment or otherwise). If the Parties decide to jointly bring suit to enforce or defend such rights, the Parties shall share equally all out-of-pocket expenses of any such suit, including attorneys’ fees and court costs; provided, however, that either Party may reduce, or decline to pay, its share of such expenses by providing written notice to the other Party. The recovery allocation provisions of Section 7.4(a)(iv) shall apply with respect to such a suit in the same way as they apply to a Product-Related Infringement. In the event only one Party wishes to participate in the proceeding or defense, it shall have the right to proceed alone, provided that the proposed action to enforce or defend the Jointly-Owned IP is not reasonably likely to directly and adversely affect its scope, validity or enforceability. Any such sole proceeding or defense shall be at such Party’s sole expense, and it may retain any recovery. The other Party agrees, at the initiating Party’s expense, to cooperate and join in any such solely-initiated proceedings in the event that a Third Party successfully asserts that the co-owner of such Jointly-Owned IP is necessary or indispensable to such proceedings.
Joint IP. Each Party shall own and retain an undivided equal ownership interest in all Intellectual Property made jointly by the employee(s) or agent(s) of one Party or any of its Affiliates and the employee(s) or agent(s) of the other Party or any of its Affiliates, including all Patents arising from such Intellectual Property (the “Joint IP”), subject only to the rights expressly granted by the Parties under this Agreement. For purposes of control of the prosecution, maintenance, defense and assertion of Joint IP arising under this Agreement, the applicable provisions of the IP License Agreement as related to the Biogen Shared Intellectual Property (as defined in the IP License Agreement) shall apply. Except as expressly permitted under this Agreement or the IP License Agreement, neither Party shall have the right to license or sublicense any Joint IP to any Third Party without the prior written consent of the other Party.
Joint IP. Subject to and except as otherwise provided in this Agreement including with respect to the exclusive licenses granted to Servier hereunder with respect to the Products and the non-compete obligation in Section 11.6, each Party shall have the right to freely sell, assign, license, encumber and otherwise exploit Joint Inventions, Joint Patents and Joint Other Intellectual Property Rights without notice or accounting to the other Party.
