Common use of Foreground Technology Clause in Contracts

Foreground Technology. a. From the Effective Date and thereafter, all Foreground Technology shall be jointly owned by Iteris and Valeo. b. The Parties will reasonably pursue registered protection of the Foreground Technology, including patent protection to protect inventions, and will each consult with the other Party to determine whether and in which countries protection shall be sought, which Party shall bear the responsibility (including any expense) for pursuing the protection and maintaining any resulting right (e.g., patent), the desired scope of protection, and which Party shall control prosecution of any application for such right. c. If it is determined that only one Party wishes to file or maintain an application to protect Foreground Technology in a country, then the non-filing Party will assign its interest in the rights following from such filed or maintained application in that country to the other (who shall own it exclusively) with the non-filing Party retaining a non-exclusive license (with the right to sub-license within the scope of this Agreement) under any resulting right in such country. Royalties payable shall be as set forth in Article 7.3(b). Where only one Party files an application under this part, that Party shall bear all expenses. d. During the term of this Agreement, the Parties agree that they will not grant any license or right under or otherwise alienate or encumber their respective interest in any jointly owned Foreground Technology, without the prior written approval of the other joint owner except that Iteris may license, alienate or encumber rights that do not cover applications for Class 1 and 2 Vehicles and Valeo may license, alienate or encumber rights that do not cover applications for Class 3 through 8 Vehicles. Either Party may, without prior written approval, in a limited license, grant to its Affiliates the right to use Foreground Technology to the extent that the licensing Party itself is permitted to use the Foreground Technology under this Agreement, subject to all limitations and restrictions (including, but not limited to, obligations related to accounting and royalties). In the absence of an agreement otherwise, which the Parties agree to negotiate in good faith, any royalties paid by any third party for a license to any jointly owned Foreground Technology for which the written approval of the other Party is required will be shared equally by the Parties. Royalties paid by any third party for a license to any jointly owned Foreground Technology for which the written approval of the other Party is not required or any royalties paid specifically for any exclusively owned rights in Foreground Technology under Article 7.2(c), will not be shared or accounted for as between the Parties. Following the expiration or any termination of this Agreement, each Party may use and enforce its rights in the jointly owned Foreground Technology without restriction and without any reporting or accounting obligation to the other Party. e. No Party shall abandon the prosecution or maintenance of any patent or patent application with respect to any Foreground Technology under its control, without notifying the other Party of such fact in reasonable time, and in no event less than forty-five (45) days prior to any relevant deadline for filing or other action, for the other Party to assume prosecution or maintenance of such patent or patent application if it so desires. If such other Party assumes prosecution or maintenance of such patent or patent application, it shall thereafter have the same rights and obligations relative to such patent or patent application as the exclusive owner and such patent or patent application shall be assigned to such other Party, subject only to a royalty free, non-exclusive license (with rights to sub-license limited to purposes related to Class 1 and 2 Vehicles only for Valeo and Class 3 through 8 Vehicles for Iteris) to the assigning Party under any resulting right. f. Representatives of the Parties shall meet in person at least once each calendar quarter, during the term of this Agreement to review intellectual property issues that may require attention under this Agreement, including but not limited to the identification of any new inventions, the status of prosecution of intellectual property rights, the identification of any third party intellectual property rights that may require attention, the coordination and development of an intellectual property strategy, the identification of any disputes or potential disputes with third parties, the identification of any requirements for designing around intellectual property rights of a third party, and the status of any other matters reasonably relating to the above matters. The designated representatives of the Parties shall make necessary and appropriate recommendations to the Parties in order that the Parties can take reasonable measures pursuant to this Article 7.2(f). The designated representatives shall jointly recommend selection of appropriate legal counsel for performing or otherwise taking any necessary or appropriate legal action. The designated representatives shall jointly recommend a fair and equitable allocation of expense sharing to assure timely and reasonable payment of expenses incurred in connection with the execution of any intellectual property strategy (including but not limited to the prosecution and maintenance of individually or jointly owned intellectual property rights, and the cost of procuring legal advice to help assure freedom to practice technology in view of third party patents).