Common use of Patentable Inventions Clause in Contracts

Patentable Inventions. If a patentable invention is conceived in the course of the parties' work on the Project and is reduced to practice during such work on the Project or within six months of termination of the Project, Lilly and Neurocrine shall discuss such invention and the desirability of filing a United States patent application covering such invention as well as any foreign counterparts. The party owning the invention (or both parties if the invention is a joint invention) shall make the final decision with respect to any such filings. All patent applications and patents on inventions made in the course of the parties' work on the Project solely by employees of Lilly shall be owned by Lilly. All patent applications and patents on inventions made in the course of the parties' work on the Project solely by employees of Neurocrine shall be owned by Neurocrine. All patent applications and patents on inventions made jointly by employees of Lilly and employees of Neurocrine shall be jointly owned. If such joint invention is within the Field, Article V shall determine Lilly's rights with respect to Neurocrine's interest in such joint invention. If such joint invention is outside the Field, Lilly shall have a right of first negotiation as to Neurocrine's interest in such joint invention and the parties shall negotiate in good faith the terms under which Lilly can exclusively commercialize such invention. Should Lilly choose not to commercialize such invention, Neurocrine shall then have a right of first negotiation as to Lilly's share of such joint invention and the parties shall negotiate in good faith the terms under which Neurocrine can exclusively commercialize such invention. If the parties, despite good faith negotiations, fail to reach agreement on terms which would allow either Lilly or Neurocrine, as appropriate, to exclusively commercialize such invention, either party may develop and commercialize such invention and such development/commercialization shall not in any way affect the other parties right to develop and commercialize such joint invention as well. Lilly shall bear its own expenses incurred in filing, prosecuting and maintaining patent applications, and any patents resulting therefrom, under this Section 4.3. Lilly shall, further, file all applications on joint inventions and Lilly shall be totally responsible for the preparation, prosecution and maintenance of such applications and any patents resulting therefrom. Neurocrine agrees to cooperate with Lilly as needed in the preparation and prosecution of such applications covering joint inventions. Neurocrine shall bear its own expenses incurred in filing, prosecuting and maintaining patent applications and any patents resulting therefrom under this Section 4.3 or the Neurocrine Patent Rights set forth in Appendix II to the extent such patents or applications do not contain claims to an Existing Neurocrine Compound or a New Compound which is a Neurocrine Compound. If such patent applications or patents contain claims to an Existing Neurocrine Compound or a New Compound which is a Neurocrine Compound, the parties shall share equally all expenses incurred in filing, prosecuting and maintaining such applications/patents, provided such expenses were incurred after the Effective Date. Each party shall provide to the other a copy of any patent application which discloses Existing Neurocrine Technology or Project Technology, prior to filing in the United States if reasonably possible, for review and comment by the other party. Any such patent application shall be maintained in confidence by the receiving party pursuant to Section 9.00. If Lilly files a patent application on a joint invention encompassed by this Article and yet, later, decides that it no longer wishes to continue prosecution and/or maintenance of such application (or any patent resulting therefrom), Lilly shall inform Neurocrine of its decision to discontinue prosecution and/or maintenance prior to discontinuance. Neurocrine may then elect to continue prosecution and/or maintenance of such application or patent at its sole expense, provided that if it does elect to continue prosecution and/or maintenance,

Patentable Inventions. If a patentable invention is conceived in The Parties expect that patent applications will be filed as required to secure suitable Patent Rights covering inventions within the course of the parties' work on the Project and is reduced to practice during such work on the Project or within six months of termination of the Project, Lilly and Neurocrine shall discuss such invention and the desirability of filing a United States patent application covering such invention as well as any foreign counterpartsResearch Technology. The party owning the invention (or both parties if the invention is a joint invention) shall make the final decision Parties agree as follows with respect to any the filing and prosecution of such filings. All applications. (a) Except as provided in Section 7.5(b) below, the Party that owns an invention within the Research Technology may, in its discretion, file such patent applications and patents on inventions made thereafter prosecute and maintain in force the resulting Patent Rights in the course of United States. With respect to jointly-owned inventions, the parties' work on Party designated by the Project solely by employees of Lilly shall be owned by Lilly. All JRC will file such patent applications and patents on inventions made thereafter prosecute and maintain in force the resulting Patent Rights in the course of the parties' work on the Project solely by employees of Neurocrine shall be owned by NeurocrineUnited States. All patent applications and patents on inventions made jointly by employees of Lilly and employees of Neurocrine shall be jointly owned. If such joint invention is within the Field, Article V shall determine Lilly's rights with respect Subject to Neurocrine's interest in such joint invention. If such joint invention is outside the Field, Lilly shall have a right of first negotiation as to Neurocrine's interest in such joint invention and the parties shall negotiate in good faith the terms under which Lilly can exclusively commercialize such invention. Should Lilly choose not to commercialize such invention, Neurocrine shall then have a right of first negotiation as to Lilly's share of such joint invention and the parties shall negotiate in good faith the terms under which Neurocrine can exclusively commercialize such invention. If the parties, despite good faith negotiations, fail to reach agreement on terms which would allow either Lilly or Neurocrine, as appropriate, to exclusively commercialize such invention, either party may develop and commercialize such invention and such development/commercialization shall not in any way affect the other parties right to develop and commercialize such joint invention as well. Lilly shall bear its own expenses incurred in filing, prosecuting and maintaining patent applications, and any patents resulting therefrom, under provisions of this Section 4.3. Lilly shall7.5, further, file all applications on joint inventions and Lilly shall be totally responsible for the preparationfiling, prosecution and maintenance of such applications and any patents resulting therefrom. Neurocrine agrees to cooperate with Lilly as needed in the preparation and prosecution of such applications covering joint inventions. Neurocrine shall bear its own expenses incurred in filing, prosecuting and maintaining all patent applications and any patents resulting therefrom under this Section 4.3 or the Neurocrine Patent Rights set forth in Appendix II to the extent such patents or applications do not contain claims to an Existing Neurocrine Compound or a New Compound which is a Neurocrine Compound. If such patent applications or patents contain claims to an Existing Neurocrine Compound or a New Compound which is a Neurocrine Compound, the parties shall share equally all expenses incurred in filing, prosecuting and maintaining such applications/patents, provided such expenses were incurred after the Effective Date. Each party shall provide to the other a copy of any patent application which discloses Existing Neurocrine Technology or Project Technology, prior to filing in outside the United States claiming inventions within the Research Technology shall be conducted through BMS's patent management and affiliates system. If a Party having the right to file a patent application on an invention hereunder declines to do so or, having filed, declines to further prosecute and/or maintain in force any Patent Rights derived from such a patent application in any country, then, unless the Party declining to file such patent application reasonably asserts trade secret rights in the subject invention, which trade secret rights are more commercially viable if reasonably possiblemaintained as a trade secret rather than as protected by the potential Patent Rights claiming such invention, the other Party shall have the right to prepare, file, prosecute and/or maintain such Patent Rights in any such country, in which event the declining Party shall, at the other Party's request and expense, provide all reasonable assistance. (b) The filing Party under Section 7.5(a) shall regularly provide the other Party with copies of all patent applications filed hereunder and other material submissions and correspondence with the patent offices, in sufficient time to allow for review and comment by the other partyParty. Any In addition, such filing Party shall provide the other Party and its legal counsel with an opportunity to consult with the Party and its patent application counsel regarding the filing and contents of any such application, amendment, submission or response, and the advice and suggestions of the other Party and its legal counsel shall be maintained taken into reasonable consideration by such Party and its legal counsel in confidence connection with such filing. Each Party shall also provide the other Party with copies of any patentability search reports made by patent counsel with respect to inventions in the receiving party pursuant to Section 9.00. If Lilly files Research Technology, including patents located, a copy of each patent application on a joint invention encompassed by this Article application, and yeteach patent that issues thereon. (c) Notwithstanding any of the foregoing, laterArris shall have the sole right, decides that it no longer wishes to continue prosecution and/or maintenance of such application (or any patent resulting therefrom), Lilly shall inform Neurocrine of its decision to discontinue prosecution and/or maintenance prior to discontinuance. Neurocrine may then elect to continue prosecution and/or maintenance of such application or patent at its sole expensediscretion, provided that if it does elect as to continue all filings and prosecution and/or maintenance,efforts for applications for Patent Rights related to Arris Delta Technology, and shall not be obligated to disclose to BMS such filings and efforts.

Patentable Inventions. If a patentable invention relating to ARCS is conceived in the course of the parties' work on the Project and is or reduced to practice during such work on the Project or course of this Agreement and/or within six (6) months of expiration or termination of the Projectthis Agreement, Lilly and Neurocrine Abbo▇▇ ▇▇▇ DPI shall discuss such invention and the desirability of filing a United States patent application covering such invention as well as any foreign counterparts. The party owning the invention (or both parties if the invention is a joint invention) shall make the final decision with respect to any such filings. All patent applications and patents on inventions made in the course of the parties' work on the Project this Agreement solely by employees of Lilly shall Abbo▇▇ ▇▇▇ll be owned by LillyAbbo▇▇. All ▇▇l patent applications and patents on inventions made in the course of the parties' work on the Project this Agreement solely by employees of Neurocrine DPI shall be owned by NeurocrineDPI. All patent applications and patents on inventions made jointly by employees of Lilly and Abbo▇▇ ▇▇▇ employees of Neurocrine DPI during the course of this Agreement shall be jointly ownedowned by Abbo▇▇ ▇▇▇ DPI. If such joint invention is within the Field, Article V shall determine Lilly's rights with respect to Neurocrine's interest in such joint invention. If such joint invention is outside the Field, Lilly shall have a right of first negotiation as to Neurocrine's interest in such joint invention and the parties shall negotiate in good faith the terms under which Lilly can exclusively commercialize such invention. Should Lilly choose not to commercialize such invention, Neurocrine shall then have a right of first negotiation as to Lilly's share of such joint invention and the parties shall negotiate in good faith the terms under which Neurocrine can exclusively commercialize such invention. If the parties, despite good faith negotiations, fail to reach agreement on terms which would allow either Lilly or Neurocrine, as appropriate, to exclusively commercialize such invention, either Each party may develop and commercialize such invention and such development/commercialization shall not in any way affect the other parties right to develop and commercialize such joint invention as well. Lilly shall bear its own expenses incurred in filing, prosecuting and maintaining patent applications, and any patents resulting therefrom, under this Section 4.3. Lilly shall, further, file all applications on joint inventions and Lilly shall be totally responsible for the preparationpreparing, prosecution and maintenance of such applications and any patents resulting therefrom. Neurocrine agrees to cooperate with Lilly as needed in the preparation and prosecution of such applications covering joint inventions. Neurocrine shall bear its own expenses incurred in filing, prosecuting and maintaining patent applications and any patents resulting therefrom under this Section 4.3 or the Neurocrine Patent Rights relating to sole inventions, as set forth in Appendix II to the extent such patents or applications do not contain claims to an Existing Neurocrine Compound or a New Compound which is a Neurocrine Compoundthis Article 14, at its sole expense. If such patent applications or patents contain claims to an Existing Neurocrine Compound or a New Compound which is a Neurocrine CompoundDPI shall also be responsible for preparing, the parties shall share equally all expenses incurred in filing, prosecuting and maintaining maintaining, using counsel mutually acceptable to Abbo▇▇ and DPI, patent applications and patents relating to inventions jointly owned by Abbo▇▇ ▇▇▇ DPI and the parties shall equally share all out-of-pocket costs (including attorney's fees) associated with such applications/patents, provided such expenses were incurred after activities. The parties shall cooperate with each other in connection with any activities described herein and shall keep the Effective Dateother informed of all material developments regarding patent matters relating to any patent applications and patents filed hereunder. Each party shall shall, further, provide to the other a copy of any patent application which discloses Existing Neurocrine Technology or Project Technology, Confidential Information prior to filing in the United States or elsewhere if reasonably possible, for review and comment by the other party. Any such patent application shall be maintained in confidence by the receiving party pursuant to Section 9.00Article 7 hereof. If Lilly files a patent application on a joint invention encompassed by this Article 14 and yeteither party, later, decides that it no longer wishes to continue to pay for its share of costs associated with prosecution and/or maintenance of such application (or any patent resulting therefrom), Lilly the party declining to pay for any further costs shall inform Neurocrine the other party of its decision to discontinue prosecution and/or maintenance prior to discontinuancepayment, in writing. Neurocrine Such non-declining party may then elect to continue prosecution and/or maintenance of such application or patent at its sole expense, provided that if it does elect to continue prosecution and/or maintenance,and/or