Common use of Inventions, Discoveries and Patents Clause in Contracts

Inventions, Discoveries and Patents. 8.1 It is recognized and understood that certain existing inventions and technologies, and those arising outside of this Agreement, are the separate property of Sponsor or Institution, as applicable, and are not affected by this Agreement, and neither Party shall have any claims to or rights in such separate inventions and technologies. 8.2 Any new patentable inventions, developments, or discoveries created or reduced to practice in the performance of the Study made by Institution, Principal Investigator and/or Study Personnel (“Inventions”) shall be promptly disclosed, in writing, to Sponsor. Title to Inventions that necessarily use or incorporate Sponsor’s Study Drug shall reside with Sponsor (“Sponsor Inventions”). Institution hereby assigns, and agrees to assign, to Sponsor all right, title and interest in and to Sponsor Inventions. Title to Inventions other than Sponsor Inventions (“Other Inventions”) shall reside with Sponsor if Sponsor personnel are the sole inventors, with Institution if Institution personnel are the sole inventors, and shall be held jointly if both Institution and Sponsor personnel are inventors. 8.3 To the extent that Institution owns sole or joint title in any such Other Inventions, Institution hereby grants to Sponsor a perpetual, irrevocable, royalty-free, non-exclusive, non-sublicensable (except to employees, contractors and consultants performing services on behalf of Sponsor) license to use the Other Inventions solely for Sponsor’s internal research and development purposes. Further, Sponsor is hereby granted, without option fee other than consideration of the Study sponsored herein and the reimbursement to Institution for patent