Common use of Joint Inventions Clause in Contracts

Joint Inventions. 12.4.1 The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. Subject to Section 12.4.3 below, it is understood that, after the termination of the RESEARCH PROGRAM, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. 12.4.2 In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 12.4.1 above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of the other party, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.

Joint Inventions. 12.4.1 (a) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union Core Countries (in Europe European countries through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties shall agree which parties shall be responsible for conducting such activities with respect to a particular Joint Invention and agree on a plan for such activities. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. Subject to Section 9.2.3(b) below, the parties will share equally all reasonable expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. Subject to Section 12.4.3 below, it is understood that, after the termination of the RESEARCH PROGRAM, the parties shall share equally the expenses and fees associated countries in accordance with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for agreed plan or a Joint Invention in the Core Countries and other mutually agreed countriesmodification thereof. 12.4.2 (b) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 12.4.1 9.2.3(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in patent application or patent relating to such activities shall not grant any THIRD PARTY third party a license under its interest in the applicable joint invention in the applicable country patent application or countries patent claiming such Joint Intervention without the prior written consent of the other party, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.

Joint Inventions. 12.4.1 The parties will cooperate to file(i) For purposes of this Agreement, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in shall mean any invention made by one or more of Lucent's employees, contractors, consultants or agents working on the Core Countries and other agreed countries. Subject to Section 12.4.3 belowDevelopment Project jointly with one or more of Company's employees, it is understood thatcontractors, after the termination of the RESEARCH PROGRAMconsultants or agents, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a which Joint Invention in is first conceived or first actually reduced to practice during the Core Countries and other agreed countriesDevelopment Project. 12.4.2 In the event that either party wishes to seek patent protection (ii) The following provisions shall apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a patent application in the United States on such Joint Invention outside and it shall notify Company whether it elects to file such application either before or at the Core Countriestime the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a patent application on such Joint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, it where applicable, community of countries. Such Party shall notify the other party heretoParty of those foreign countries, if any, in which it elects to file such patent applications. If both parties The other Party shall have the right to file patent applications on such Joint Inventions in all other foreign countries. (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other Party shall have the right to review and comment on each such application prior to its filing, and shall furnish the filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days of the invoice. (F) In the event that a Party does not wish to seek pay its share of expenses associated with a patent protection with respect application or an issued patent in any country as specified in Section 2.03(b)(ii)(D), such Party shall notify the other Party in writing of its refusal to share in such Joint Invention expenses, and shall assign all its right, title and interest in such patent application or issued patent in such country or countriesto the other Party, activities shall be subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or issued patent to make, have made, use, lease, sell, offer for sale and import the Licensed Product. (G) Subject to the provisions of Section 12.4.1 above. If only one party wishes to seek 2.03(b)(ii)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect theretocovering such Joint Inventions, at its own expense. Whenever possible, and each Party hereby consents to the parties shall cooperate to obtain the benefit granting of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant without accounting therefor to the terms of this AGREEMENTother Party.

Joint Inventions. 12.4.1 The parties will cooperate to file(i) For purposes of this Agreement, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in shall mean any invention made by one or more of Lucent’s employees, contractors, consultants or agents working on the Core Countries and other agreed countries. Subject to Section 12.4.3 belowDevelopment Project jointly with one or more of Company’s employees, it is understood thatcontractors, after the termination of the RESEARCH PROGRAMconsultants or agents, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a which Joint Invention in is first conceived or first actually reduced to practice during the Core Countries and other agreed countriesDevelopment Project. 12.4.2 In the event that either party wishes to seek patent protection (ii) The following provisions shall apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a patent application in the United States on such Joint Invention outside and it shall notify Company whether it elects to file such application either before or at the Core Countriestime the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a patent application on such Joint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, it where applicable, community of countries. Such Party shall notify the other party heretoParty of those foreign countries, if any, in which it elects to file such patent applications. If both parties The other Party shall have the right to file patent applications on such Joint Inventions in all other foreign countries. Back to Contents (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other Party shall have the right to review and comment on each such application prior to its filing, and shall furnish the filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days of the invoice. (F) In the event that a Party does not wish to seek pay its share of expenses associated with a patent protection with respect application or an issued patent in any country as specified in Section 2.03(b)(ii)(D), such Party shall notify the other Party in writing of its refusal to share in such Joint Invention expenses, and shall assign all its right, title and interest in such patent application or issued patent in such country or countriesto the other Party, activities shall be subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or issued patent to make, have made, use, lease, sell, offer for sale and import the Licensed Product. (G) Subject to the provisions of Section 12.4.1 above. If only one party wishes to seek 2.03(b)(ii)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. Back to Contents (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect theretocovering such Joint Inventions, at its own expense. Whenever possible, and each Party hereby consents to the parties shall cooperate to obtain the benefit granting of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant without accounting therefor to the terms of this AGREEMENTother Party.

Joint Inventions. 12.4.1 (i) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the U.S., Japan, the United StatesKingdom, Japan Italy, Germany and the European Union France (in Europe European countries through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties, and unless otherwise mutually agreed, Centocor shall assume responsibility for the preparation and filing of all patent applications in connection therewith, and shall keep Biometric fully informed as to the status of such patent matters, including, without limitation, by providing Biometric the opportunity, at Biometric's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. Subject to Section 12.4.3 below, it is understood that, after the termination of the RESEARCH PROGRAM, the parties shall share equally the expenses and fees associated with the filing, prosecutionprosection, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. 12.4.2 (ii) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities they shall be subject to do so in accordance with Section 12.4.1 12.3(b)(i) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY third party a license under its interest in the applicable joint invention in the applicable country or countries Joint Invention without the prior written consent of the other party. (iii) Each of Centocor and Biometric shall keep the other fully informed as to the status of patent matters described in this Article 12, including without limitation, by providing the other the opportunity to fully review and comment on any documents as far in advance of filing dates as possible which shall not will be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention filed in any country pursuant to patent office, and providing the terms other copies of this AGREEMENTany substantive documents that such party receives from such patent offices promptly after receipt, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions. Centocor and Biometric shall each reasonably cooperate with and assist the other at its own expense in connection with such activities, at the other party's request.

Joint Inventions. 12.4.1 The parties Each Party will cooperate use reasonable efforts to file, prosecute and maintain patent applications covering advise the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention as provided in Section 10.2 or promptly upon such Party becoming aware of such Joint Invention. If the Invention is an Antibody Invention, it shall be assigned as provided in Section 10.1(a) and shall be prosecuted as provided in Section 10.3(e). As soon as one of the Parties concludes that it wishes to file a patent application covering a Joint Invention, it immediately shall inform the other Party thereof, consult about the filing procedures concerning such patent application, and file such patent applications for the Joint Inventions in such countries as the JPC determines. For this purpose, such Party will provide the other Party with the determination of inventors and scope of claims as early as possible. If a Party is faced with possible loss of rights resulting from the delay necessary for such communication, such communications may take place promptly after filing a provisional or convention application. PDL will have the first right of election to file patent applications for Joint Inventions in any country in the Core Countries and other agreed countriesworld. Subject If PDL declines to Section 12.4.3 belowfile any such application within [ * ] after receipt of a written request to do so from EXEL, it is understood thatthen EXEL may do so. Regardless of which Party files a patent application, after the termination however, any claims covered by such applications shall be considered as part of the RESEARCH PROGRAM, Joint Patents. If the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any Party who initially files a patent application and resulting patent for covering a Joint Invention decides not to continue the prosecution or maintenance of such patent application or patent in the Core Countries and other agreed countries. 12.4.2 In the event that either party wishes to seek patent protection with respect to general or in any Joint Invention outside the Core Countriesparticular country, it promptly shall notify the other party heretoParty in writing in reasonably sufficient time for such other Party to assume such prosecution and maintenance, and shall take the necessary steps and execute the necessary documents to permit such other Party to assume such prosecution or maintenance. The other Party shall have the right but not the obligation to assume such prosecution or maintenance. Antibody Inventions. Antibody Inventions initially shall be assigned to EXEL as provided in Section 10.1(a). Unless the Parties agree otherwise, EXEL shall file patent applications for the Antibody Inventions in such countries as the JPC determines. If both parties wish EXEL declines to seek patent protection with respect file any such application within [ * ] after receipt of a written request to do so from PDL, then PDL may do so. At the time that an application constituting an Antibody Patent is filed, EXEL shall promptly notify PDL in writing in reasonably sufficient time for PDL to assume the prosecution and maintenance of that Antibody Patent, and shall take the necessary steps and execute the necessary documents to permit PDL to assume such Joint Invention in such country prosecution or countries, activities shall be subject to Section 12.4.1 abovemaintenance. If only one party wishes PDL subsequently decides not to seek patent protection with respect continue the prosecution or maintenance of an Antibody Patent directed to such Joint Invention a Pre-Opt-In Product, in such country general or countriesin any particular country, it may filepromptly shall notify EXEL in writing in reasonably sufficient time for EXEL to assume such prosecution and maintenance, prosecute and maintain patent applications shall take the necessary steps and patents with respect thereto, at its own expenseexecute the necessary documents to permit EXEL to assume such prosecution or maintenance. Whenever possible, EXEL shall have the parties shall cooperate right but not the obligation to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treatyassume such prosecution or maintenance.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of the other party, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.

Joint Inventions. 12.4.1 In the event that, in performance of this Agreement, any employee or agent of NetLogic and any employee or agent of MTI jointly Make an Invention (a “Joint Invention”), such inventors shall promptly make a complete written disclosure, signed by each, to their respective Technical Coordinators. The Technical Coordinators shall then promptly coordinate a review of such disclosure to determine if MTI and NetLogic would like to attempt to secure patent protection. Joint Inventions shall be jointly owned, title to all patents issued thereon shall be joint, all expense incurred in obtaining and maintaining such patents, except as provided herein, shall be equally shared, and each Party shall have the unrestricted right to license third parties will cooperate thereunder without accounting to filethe other Party. However, prosecute when the Parties meet and maintain patent applications covering discuss matters relating to obtaining legal protection for Joint Inventions, if one Party does not want to pursue filing an application on the Joint Invention(s) within the RESEARCH PROGRAM Inventions in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectivelyany country, the "Core Countries") and other countries agreed by Party may independently pursue such protection of the partiesJoint Inventions in such country on behalf of that Party only at the Party’s sole expense. The parties will share equally all expenses and fees associated with applicant Party in such country shall be the filing, prosecution, issuance and maintenance sole owner of any and all resulting patents or other intellectual property rights arising from the application, and shall be entitled to all revenues derived by such Party relating to the issued patent application or other protection; provided, however, that the other Party shall have a non-transferable, non-exclusive, royalty-free license under such patent or other intellectual property protection within such country and resulting for the full term of such patent or other legal protection, to make, have made, use, sell, offer for sale, import and market products or processes utilizing or embodying the subject matter claimed therein. Notwithstanding the foregoing, if a Joint Invention in the Core Countries and other agreed countries. Subject to Section 12.4.3 below, it is understood that, after the termination embodies Confidential Information of the RESEARCH PROGRAMeither Party, the parties Party owning the Confidential Information shall share equally have the expenses and fees associated with the filing, prosecution, issuance and maintenance of any right to exclude such Confidential Information from a patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. 12.4.2 In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 12.4.1 above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation TreatyInvention.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of the other party, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.

Joint Inventions. 12.4.1 The parties Each Party will cooperate use reasonable efforts to file, prosecute and maintain patent applications covering advise the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention as provided in Section 10.2 or promptly upon such Party becoming aware of such Joint Invention. If the Invention is an Antibody Invention, it shall be assigned as provided in Section 10.1(a) and shall be prosecuted as provided in Section 10.3(e). As soon as one of the Parties concludes that it wishes to file a patent application covering a Joint Invention, it immediately shall inform the other Party thereof, consult about the filing procedures concerning such patent application, and file such patent applications for the Joint Inventions in such countries as the JPC determines. For this purpose, such Party will provide the other Party with the determination of inventors and scope of claims as early as possible. If a Party is faced with possible loss of rights resulting from the delay necessary for such communication, such communications may take place promptly after filing a provisional or convention application. PDL will have the first right of election to file patent applications for Joint Inventions in any country in the Core Countries and other agreed countriesworld. Subject If PDL declines to Section 12.4.3 belowfile any such application within [ * ] after receipt of a written request to do so from EXEL, it is understood thatthen EXEL may do so. Regardless of which Party files a patent application, after the termination however, any claims covered by such applications shall be considered as part of the RESEARCH PROGRAM, Joint Patents. If the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any Party who initially files a patent application and resulting patent for covering a Joint Invention decides not to continue the prosecution or maintenance of such patent application or patent in the Core Countries and other agreed countries. 12.4.2 In the event that either party wishes to seek patent protection with respect to general or in any Joint Invention outside the Core Countriesparticular country, it promptly shall notify the other party heretoParty in writing in reasonably sufficient time for such other Party to assume such prosecution and maintenance, and shall take the necessary steps and execute the necessary documents to permit such other Party to assume such prosecution or maintenance. If both parties wish The other Party shall have the right but not the obligation to seek patent protection with respect to assume such Joint Invention in such country prosecution or countries, activities shall be subject to Section 12.4.1 above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treatymaintenance.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of the other party, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.

Joint Inventions. 12.4.1 The parties will cooperate to file(i) For purposes of this Agreement, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in shall mean any invention made by one or more of Lucent's employees, contractors, consultants or agents working on the Core Countries and other agreed countries. Subject to Section 12.4.3 belowDevelopment Project jointly with one or more of Company's employees, it is understood thatcontractors, after the termination of the RESEARCH PROGRAMconsultants or agents, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a which Joint Invention in is first conceived or first actually reduced to practice during the Core Countries and other agreed countriesDevelopment Project. 12.4.2 In the event that either party wishes to seek patent protection (ii) The following provisions shall apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a patent application in the United States on such Joint Invention outside and it shall notify Company whether it elects to file such application either before or at the Core Countriestime the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a patent application on such Joint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, it where applicable, community of countries. Such Party shall notify the other party heretoParty of those foreign countries, if any, in which it elects to file such patent applications. If both parties The other Party shall have the right to file patent applications on such Joint Inventions in all other foreign countries. (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other Party shall have the right to review and comment on each such application prior to its filing, and shall furnish the filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days of the invoice. MPhase, Inc. DEVELOPMENT AGREEMENT (F) In the event that a Party does not wish to seek pay its share of expenses associated with a patent protection with respect application or an issued patent in any country as specified in Section 2.03(b)(ii)(D), such Party shall notify the other Party in writing of its refusal to share in such Joint Invention expenses, and shall assign all its right, title and interest in such patent application or issued patent in such country to the other Party, subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or countriesissued patent to make, activities have made, use, lease, sell, offer for sale and import. Such nonexclusive licenses shall be subject for any and all products and services of the kinds furnished or used in the operation of the Party's and its Subsidiaries' businesses. (G) Subject to the provisions of Section 12.4.1 above. If only one party wishes to seek 2.03(b)(f)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect theretocovering such Joint Inventions, at its own expense. Whenever possible, and each Party hereby consents to the parties shall cooperate to obtain the benefit granting of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant without accounting therefor to the terms of this AGREEMENTother Party.

Joint Inventions. 12.4.1 The parties will cooperate to file(i) For purposes of this Agreement, prosecute and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in shall mean any invention made by one or more of Lucent's employees, contractors, consultants or agents working on the Core Countries and other agreed countries. Subject to Section 12.4.3 belowDevelopment Project jointly with one or more of Company's employees, it is understood thatcontractors, after the termination of the RESEARCH PROGRAMconsultants or agents, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a which Joint Invention in is first conceived or first actually reduced to practice during the Core Countries and other agreed countriesDevelopment Project. 12.4.2 In the event that either party wishes to seek patent protection (ii) The following provisions shall apply only with respect to any Joint Invention: (A) Lucent shall have the first right to file a patent application in the United States on such Joint Invention outside and it shall notify Company whether it elects to file such application either before or at the Core Countriestime the development project is complete. (B) Company shall have the right to file a patent application in the United States on such Joint Invention in any case in which Lucent does not elect to file pursuant to Section 2.05(ii)(A) hereof. (C) The Party that elects to file a patent application on such Joint Invention in the United States shall have the first right of election to file a corresponding patent application in each foreign country or, it where applicable, community of countries. Such Party shall notify the other party heretoParty of those foreign countries, if any, in which it elects to file such patent applications. If both parties The other Party shall have the right to file patent applications on such Joint Inventions in all other foreign countries. (D) The expenses for preparing, filing and prosecuting each application, and for issue of the respective patents, shall be borne by the Party which prepares and files the application, except that expenses associated with official patent office fees, taxes, annuities and translation costs, if applicable, shall be equally divided between Lucent and Company, and paid as specified in Section 2.03(b)(ii)(E). The other Party shall have the right to review and comment on each such application prior to its filing, and shall furnish the filing Party with all documents, information, or other assistance that may be necessary for the preparation, filing and prosecution of each such application. (E) In the case of an application for patent that is filed in a country that requires the translation of the application or payment of taxes, maintenance fees or annuities on a pending application or on an issued patent, the Party that files the application shall pay such taxes, maintenance fees or annuities on the pending application or the issued patent and shall invoice the other Party for one-half (1/2) of all such expenses, which shall be payable by the other Party within thirty (30) days of the invoice. MPhase, Inc. DEVELOPMENT AGREEMENT (F) In the event that a Party does not wish to seek pay its share of expenses associated with a patent protection with respect application or an issued patent in any country as specified in Section 2.03(b)(ii)(D), such Party shall notify the other Party in writing of its refusal to share in such Joint Invention expenses, and shall assign all its right, title and interest in such patent application or issued patent in such country to the other Party, subject to existing licenses and rights granted by such Party to third parties. Concurrent with the execution by such Party of all necessary documents associated with such an assignment, the other Party shall grant to the Party and its Subsidiaries personal, non-transferable, nonexclusive, royalty-free, licenses (with no sublicensing rights) under such patent application or countriesissued patent to make, activities have made, use, lease, sell, offer for sale and import. Such nonexclusive licenses shall be subject for any and all products and services of the kinds furnished or used in the operation of the Party's and its Subsidiaries' businesses. (G) Subject to the provisions of Section 12.4.1 above. If only one party wishes to seek 2.03(b)(ii)(F), the Parties shall each have an equal title interest in each application and patent protection with respect to for such Joint Invention in such country or countriesInventions, it may filewith Company holding an undivided one-half (1/2) interest and Lucent holding an undivided one-half (1/2) interest. (H) Subject to the provisions of Section 2.03(b)(ii)(F), prosecute and maintain patent each Party shall have the right to grant nonexclusive licenses under applications and patents with respect theretocovering such Joint Inventions, at its own expense. Whenever possible, and each Party hereby consents to the parties shall cooperate to obtain the benefit granting of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of licenses by the other partyParty. Each Party shall have the right to retain all royalties that it receives for granting licenses, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant without accounting therefor to the terms of this AGREEMENTother Party.

Joint Inventions. 12.4.1 The parties will cooperate to file, prosecute prosecute, and maintain patent applications covering the Joint Invention(s) within the RESEARCH PROGRAM in the United States, Japan Japan, and the European Union (in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally LICENSEE shall pay all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. Subject to Section 12.4.3 belowissuance, it is understood that, after the termination of the RESEARCH PROGRAM, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. 12.4.2 In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 12.4.1 above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute prosecute, and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions conventions, and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of the other party, which shall not be unreasonably withheld. KOSAN SKI agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENT.

Joint Inventions. 12.4.1 The parties (a) PDL will cooperate have the first right of election to file, prosecute and maintain file priority patent applications covering the for Joint Invention(s) within the RESEARCH PROGRAM Inventions in any country in the United Statesworld. If PDL declines to file such applications then Roche may do so. Regardless of which party files a priority patent application, Japan however, any claims covered by such applications shall be considered as part of the PDL Patents for the purpose of defining a Valid Claim under this Amended and Restated Agreement. (b) The party not performing the priority patent filings for Joint Inventions pursuant to this Section 9.2 undertakes without cost to the filing party to obtain all necessary assignment documents for the filing party, to render all signatures which shall be necessary for such patent filings and to assist the filing party in all other reasonable ways which are necessary for the issuance of the patents involved as well as for the maintenance and prosecution of such patents. The party not performing the patent filings shall upon request be authorized by the other party to have access to the files concerning such patents in any patent offices in the world. (c) The party performing the priority patent filings for Joint Inventions pursuant to this Section 9.2 undertakes to perform the corresponding convention filings from case to case, after having discussed the countries for foreign filings with the other party at its cost and expense; except for the costs and expenses of foreign filings for such patents which are to be borne by Roche in accordance with Section 7.2 of this Amended and Restated Agreement and the European Union terms of the ▇. ▇▇▇▇▇ Agreement. (d) Should the responsible party decide that it is no longer interested in Europe through a European Patent Convention application) (collectively, the "Core Countries") and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for maintaining or prosecuting a Joint Invention in the Core Countries and other agreed countries. Subject to Section 12.4.3 below, it is understood that, after the termination of the RESEARCH PROGRAM, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. 12.4.2 In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core CountriesRoche-PDL Patent, it shall notify promptly advise the other party heretothereof. If both parties wish to seek patent protection with respect to Upon the written request of such Joint Invention in such country or countries, activities shall be subject to Section 12.4.1 above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements (e.g., the Patent Cooperation Treaty.) in order to obtain the benefits afforded thereby. In any such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in the applicable country or countries without the prior written consent of the other party, which such Joint Roche-PDL Patent shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant assigned to the terms of this AGREEMENTother party at no cost to the assignee. If any such patents or patent applications are assigned to Roche, they shall then be deemed to be a Sole Roche Patent and, to the extent such Joint Roche-PDL Patent contains claims outside the Field, PDL and its Affiliates shall have a worldwide immunity from suit thereunder. If any such patents or patent applications are assigned to PDL, they shall then be deemed to be a Sole PDL Patent and, to the extent such Joint Roche-PDL Patents contain claims outside the Field, Roche and its Affiliates shall have a worldwide immunity from suit thereunder.

Joint Inventions. 12.4.1 The parties will cooperate to file, prosecute (a) Any inventions made jointly by CIL and maintain patent applications covering the Joint Invention(s) ALTEON that are within the RESEARCH PROGRAM Field shall be jointly owned, but shall be subject to the exclusive license granted hereunder to CIL and subject to all of the terms of CIL's license hereunder. (b) ALTEON will have the right of first refusal to acquire an exclusive license for any inventions made jointly by the Parties relating to therapeutic aspects of the Licensed Technology in accordance with the United Statesfollowing terms: (1) CIL shall give written notice to ALTEON of its interest in entering into a licensing arrangement for any such joint invention, Japan and the European Union (in Europe through a European Patent Convention application) (collectivelytogether with sufficient information regarding such joint invention which is reasonably necessary for ALTEON to make an informed decision regarding such arrangement, including, without limitation, the "Core Countries"commercial terms upon which CIL is interested in offering an exclusive license for such joint invention. ALTEON shall have ninety (90) days after receipt of such notice and other countries agreed by the parties. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries. Subject information to Section 12.4.3 below, decide whether or not it is understood that, after the termination of the RESEARCH PROGRAM, the parties shall share equally the expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countrieswishes to accept such offer. 12.4.2 (2) In the event that either party wishes ALTEON declines to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection accept such offer with respect to such Joint Invention in joint invention or does not reply to CIL's notice within the ninety (90) day period, and if CIL identifies a third party willing to enter into a licensing arrangement for such country or countriesjoint invention on terms no less advantageous to CIL than those offered to ALTEON for such joint invention, activities shall be subject to Section 12.4.1 above. If only one party wishes to seek patent protection ALTEON will, together with respect CIL, grant an exclusive license of such joint invention to such Joint Invention third party. ALTEON shall collect all royalties from such third party and shall pay fifty percent (50%) of such royalties and other payments received by ALTEON from such third party to CIL within thirty (30) days after receipt of such payments. (3) In no event may CIL conclude any transaction with any third party on terms less advantageous to CIL than those offered to ALTEON without first offering said less advantageous terms to ALTEON in compliance with this Section 5.6(b). (c) Any other joint inventions outside the Field which do not relate to therapeutic aspects of the Licensed Technology will be jointly owned, and CIL and ALTEON will negotiate in good faith to determine how best to recognize the value of each party's contribution to the joint invention, taking into account (i) the relative efforts by CIL and ALTEON in developing such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. Whenever possible, the parties shall cooperate to obtain the benefit of international treaties, conventions and/or agreements joint invention; (e.g., the Patent Cooperation Treaty.ii) in order to obtain the benefits afforded thereby. In any whether products developed from such case, the party declining to participate in such activities shall not grant any THIRD PARTY a license under its interest in the applicable joint invention in are covered by a valid claim of a patent; (iii) the applicable country or countries without potential sales volume and profitability of such products; and (iv) the prior written consent projected expenses of the other party, which shall not be unreasonably withheld. KOSAN agrees to provide its written consent, if necessary, for LICENSEE to sublicense any joint invention in any country pursuant to the terms of this AGREEMENTmarketing such products.