Common use of Joint Inventions Clause in Contracts

Joint Inventions. (a) Inventions developed, conceived or first reduced to practice, as those terms are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly by the parties (the "Joint Inventions"), will be jointly owned by the parties, each party having an equal and undivided interest therein, without the duty to account to the other for any use made of such Joint Inventions. Notwithstanding the foregoing, neither party may use the Joint Inventions in any way which would harm the other's ownership interest therein. The parties agree to mutually determine whether a patent application or applications will be filed on such Joint Inventions, the party which will prepare and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the parties. (b) If the parties are not able to mutually agree to file an application or applications on a Joint Invention, either one of the parties may elect to assume such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear its share of the expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, without the prior written consent of the other party (which consent may be withheld for any reason, in its sole and absolute discretion), assign or otherwise transfer its interest in any Joint Invention, except as expressly provided herein.

Joint Inventions. (a) Inventions developed, conceived or first reduced to practice, as those terms are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly As regards any joint invention by the parties Parties hereunder, the Party from whom the majority of the data underlying any such joint invention arose (the "Joint Inventions"“controlling Party”) will have the first right, but not the obligation, to undertake filing(s), prosecution and maintenance of inventorship certificate(s), patent application(s) and patent(s) thereon. In connection with any such filing(s), the filing Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) and the Parties will, prior to filing of the patent application, agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the filing Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably in advance of filing, and (ii) will keep the non-controlling Party reasonably informed of the status of such filing, prosecution and maintenance, including, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the Party from whom the majority of the data underlying any such joint invention fails to undertake the filing(s) of any such patent application with respect to any such invention within [***] days after receipt of written notice from the other Party that the other Party believes filing(s) of such an application by such Party is appropriate, such other Party may undertake such filing(s) at its own expense, in which case the non-filing Party will assign all of its rights to such joint invention to the filing Party and any subsequently issued patent thereon will be owned solely by the filing Party. Either Party may assign its rights hereunder to any jointly owned by the partiesinvention, each party having an equal and undivided interest thereininventorship certificate, without the duty to account patent application or patent to the other for any use made of such Joint Inventions. Notwithstanding Party, who will then have the foregoing, neither party may use the Joint Inventions in any way which would harm the other's ownership interest therein. The parties agree to mutually determine whether a patent application or applications will be filed on such Joint Inventions, the party which will prepare and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the parties. (b) If the parties are not able to mutually agree to file an application or applications on a Joint Invention, either one of the parties may elect to assume such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear its share of the expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, without the prior written consent of the other party (which consent may be withheld for any reasonright, in its discretion, to assume the filing, prosecution and/or maintenance thereof as the sole owner thereof and absolute discretion), assign or otherwise transfer at its interest in any Joint Invention, except as expressly provided hereinsole cost and expense.

Joint Inventions. 9.2.1 The Parties shall jointly determine which Party will control the procurement and maintenance of any patent application or patent claiming a Joint Invention (a) Inventions developed, conceived or first reduced to practice, as those terms are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly by the parties (the a "Joint InventionsNew Patent"). Unless otherwise agreed upon in writing, will procurement and maintenance costs of any New Patent shall be jointly owned equally paid by the parties, each party having an equal BioCurex and undivided interest therein, Inverness. 9.2.2 Each Party may use any Joint Invention for research purposes without the payment of royalties or duty to account to the other for Party. If either Party commercializes any use made product (other than a Product), the use, manufacture or sale of which is claimed by an unexpired claim of a New Patent (which claim has not been abandoned, finally disallowed or declared invalid or unenforceable), then such Party shall pay to the other Party a royalty of 5% of Net Sales of such Joint Inventionsproduct, payable quarterly in U.S. dollars. Notwithstanding All such payments shall be accompanied by a royalty report showing the foregoingbasis for calculating royalties payable under this Section, with no less detail than the reports required under Section 0 hereof. 9.2.3 Except as otherwise set forth herein, neither party may use the Joint Inventions in any way which would harm the other's ownership interest therein. The parties agree to mutually determine whether a patent application Party shall transfer, license or applications will be filed on such Joint Inventions, the party which will prepare and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the parties. (b) If the parties are not able to mutually agree to file an application or applications on a Joint Invention, either one of the parties may elect to assume such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all encumber its rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear its share of the expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, patent and other intellectual property rights therein) without the prior written consent of the other party party. Neither Party shall withhold or fail to give its consent to license any Joint Invention (which a) in order to renegotiate the terms set forth in this Agreement, or (b) other than in good faith, and any Party withholding or failing to give such consent may be withheld for any reasonshall provide the other Party with the reasons, in its sole and absolute discretion)writing, assign or otherwise transfer its interest for the denial. Should a Party find those reasons insufficient, it shall have the right to seek resolution of the dispute in any Joint Invention, except as expressly provided hereinaccordance with the terms of this Agreement.

Joint Inventions. (a) Inventions developed, conceived or first reduced to practice, as those terms are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly by the parties (the "Joint Inventions"), will be jointly owned by the parties, each party having an equal and undivided interest therein, without the duty to account to the other for any use made of such Joint Inventions. Notwithstanding the foregoing, neither party may use the Joint Inventions in any way which would harm the other's ownership interest therein. The parties agree to mutually determine whether a patent application or applications will be filed on such Joint Inventions, the party which will prepare and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the *** Portions of this page have been omitted to a request for Confidential Treatment and filed separately with the commission. parties. (b) If the parties are not able to mutually agree to file an application or applications on a Joint Invention, either one of the parties may elect to assume such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear its share of the expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, without the prior written consent of the other party (which consent may be withheld for any reason, in its sole and absolute discretion), assign or otherwise transfer its interest in any Joint Invention, except as expressly provided herein.

Joint Inventions. 6.1. As between the Parties, all right, title and interest to inventions and other subject matter (atogether with all intellectual property rights therein) Inventions developed, conceived or created or first reduced to practicepractice (in the case of patentable inventions) or made or developed (in the case of non-patentable inventions) in connection with this Agreement (“Inventions”) (i) by or under the authority of Lithera or its Affiliates, as those terms independently of NovaMedica and its Affiliates, shall be owned by Lithera, (ii) by or under the authority of NovaMedica or its Affiliates, independently of Lithera and its Affiliates, shall be owned by NovaMedica and (iii) that are used before the U.S. Patent and Trademark Office, by statute and under common law, invented jointly by personnel of Lithera or its Affiliates, on the parties (one hand, and NovaMedica or its Affiliates, on the "Joint Inventions")other hand, will be owned jointly owned by the partiesLithera and NovaMedica (“Joint Inventions”), and subject to Section 6.7 below, each party having Party shall retain an equal undivided one-half interest in and undivided interest thereinto such Joint Inventions, including, without limitation, any patents resulting therefrom, with full ownership rights in and to any field and including the duty right to practice, assign, license, or otherwise exploit such Joint Inventions, in each case, without any obligation to obtain the approval of the other Party, nor to pay to the other Party any share of the proceeds from or otherwise account to the other Party for such activities, and each Party hereby waives any use made right it may have under the Laws of any country to require such approval, sharing or accounting. 6.2. Each Party shall promptly disclose to the other any invention disclosures, or other similar documents, submitted to it by its employees, agents or independent contractors describing subject matter that are purported to be Joint Inventions. Notwithstanding the foregoing, neither party may use the Joint Inventions in any way which would harm the other's ownership interest therein. The parties agree to mutually determine whether a patent application or applications will be filed on such Joint Inventions, the party which will prepare and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the parties. (b) If 6.3. Upon the parties are not able to mutually agree to file an application or applications on identification of a Joint Invention, either one of the parties may elect to assume JDC shall (i) promptly discuss such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear its share of the expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, without the prior written consent of the other party (which consent may be withheld for any reason, in its sole and absolute discretion), assign or otherwise transfer its interest in any Joint Invention, except (ii) promptly discuss the desirability of filing a PCT patent application covering such Joint Invention, and (iii) make the final decision with respect to any such filings as expressly provided herein.soon as practicable, it being understood that in the event that the JDC cannot

Joint Inventions. (a1) Any Inventions developedthat are conceived, conceived or first reduced to practice, as those terms practice or created under this Agreement that are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly by the parties (the "Joint Inventions"), will not NuPathe Inventions or LTS Inventions shall be jointly owned by the parties, each party having an equal Parties (‘Joint Inventions”). (2) Each of LTS and undivided interest therein, without the duty to account NuPathe will promptly disclose to the other in writing any Invention that might, under the applicable patent laws, be patentable and constitute a Joint Invention that would be owned by, or jointly owned with, the other party pursuant to this Section 9.03. With respect to all patent applications (including amendments, continuations or continuations in part) related to Joint Inventions (the “Joint Patent Applications”), the Parties shall determine which Party shall be responsible for any use made filing, prosecuting, maintaining and defending patent applications and patents on behalf of both Parties (the “Responsible Party”) based on a good faith determination of the relative contributions of the Parties to the invention and the relative level of interest of the Parties in the Invention. At least twenty (20) days prior to the contemplated filing of such Joint Inventions. Notwithstanding patent application, the foregoing, neither party may use Responsible Party shall submit a substantially completed draft of the Joint Inventions in Patent Applications to the other Party and provide such Party with a reasonable opportunity to review and comment on any way which would harm the other's ownership interest thereinsuch documents prior to filing. The parties agree Responsible Party shall also promptly provide the other Party with copies of any substantive prosecution correspondence received directly or indirectly from a patent office or from local patent counsel assisting with patent prosecution of such applications and the other Party shall have an opportunity to mutually determine whether review and comment on any response thereto. The Responsible Party will consider in good faith the other Party’s comments and suggestions with respect to Joint Patent Applications and/or substantive prosecution correspondence and shall use its Commercially Reasonable Efforts to prepare, file, prosecute and maintain Joint Patents, in the Territory that provide the broadest possible coverage for the Product and shall not take any actions that would lessen or minimize coverage without the other Party’s prior written approval. (3) Any Joint Patent Applications shall be filed and registered in the name of LTS and NuPathe. Except as set forth below, the Parties shall share equally the costs of the preparation, filing, prosecution and maintenance of all Joint Patent Applications. (4) If the Responsible Party does not wish to file, prosecute or maintain any Joint Patent Application or maintain or defend such a patent in a particular country, it shall grant the other Party any necessary authority to file, prosecute and maintain such a patent application or applications will be filed on maintain or defend such Joint Inventions, a patent in the party which will prepare and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the partiesname of both Parties. (b5) If the parties are either Party elects not able to mutually agree to file an application or applications on pay its portion of any shared costs for a Joint InventionPatent Application or patent issuing therefrom, either one of the parties other Party may elect proceed with such Joint Patent Application in its own name and at its sole expense, in which case the Party electing not to assume such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear pay its share of costs shall assign its entire right, title and interest in and to such Joint Patent Application to the expenses of prosecuting or maintaining patents covering other Party and such invention shall be treated as a Joint sole Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, without the prior written consent of the other party (which consent may be withheld for any reason, in its sole and absolute discretion), assign or otherwise transfer its interest in any Joint Invention, except as expressly provided hereinassignee.

Joint Inventions. (a) All Inventions developed, conceived that are not ▇▇▇▇▇▇▇ Inventions or first reduced to practice, as those terms are used before the U.S. Patent and Trademark Office, by statute and under common law, jointly by the parties Idenix Inventions (the "“Joint Inventions"), will ”) shall be jointly owned by the parties, Parties and each party having an equal and undivided interest therein, Party will have the full right to exploit such Joint Inventions without the duty consent of, or any obligation to account to, the other Party. (i) If the Parties agree to file a Patent on a Joint Invention, the Parties shall select either (A) a Party or (B) mutually acceptable outside patent counsel to act on behalf of both Parties in the preparation, filing, prosecution (including any proceedings relating to reissues, reexaminations, protests, interferences and requests for Patent extensions) and maintenance of any Patents covering such Joint Inventions (each a “Joint Patent”). The Parties shall agree in writing on which Party shall be responsible for each Joint Patent or set of Joint Patents, or shall have primary responsibility for interacting with and instructing outside patent counsel, if applicable, and may switch such election upon mutual written agreement. In each case, such selected Party (the “Prosecuting Party”) shall keep the other Party (the “Non-Prosecuting Party”) advised as to material developments and all steps to be taken with respect to any such Patents and shall furnish the Non-Prosecuting Party, sufficiently in advance for the other Party to comment, with copies of all patent applications and other material submissions and correspondence with any patent counsel or patent authorities pertaining to the other for any use made Joint Patents. The Prosecuting Party will give due consideration to the comments of such the Non-Prosecuting Party. The Non-Prosecuting Party shall reasonably assist and cooperate in obtaining, prosecuting and maintaining the Joint InventionsPatents. Notwithstanding the foregoing, neither party may use the Joint Inventions Prosecuting Party shall not take any position in any way which would harm a submission to a Patent office that interprets the other's ownership interest therein. The parties agree to mutually determine whether a patent application or applications will be filed on such Joint Inventions, the party which will prepare and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the parties. (b) If the parties are not able to mutually agree to file an application or applications on scope of a Joint Invention, either one of the parties may elect to assume such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear its share of the expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, Patent without the prior written consent of such Non-Prosecuting Party. The Prosecuting Party shall be reimbursed for the reasonable and verifiable costs incurred in prosecuting Joint Patents and the subsequent maintenance of Joint Patents by the Prosecuting Party, but not including any costs incurred by the Prosecuting Party with regard to its internal counsel and other internal personnel, such that Idenix shall be responsible for [**] percent ([**]%) of such costs and ▇▇▇▇▇▇▇ shall be responsible for [**] percent ([**]%) of such costs, with such payments being due by the Non-Prosecuting Party within [**] days after receiving an invoice. If the Prosecuting Party intends to allow any Joint Patent to lapse or to abandon any Joint Patent, the Prosecuting Party shall, whenever practicable, notify the Non-Prosecuting Party of such intention at least [**] days prior to the date upon which such Joint Patent shall lapse or become abandoned, and the Non-Prosecuting Party shall thereupon have the right, but not the obligation, to assume full responsibility for the prosecution, maintenance and defense thereof and all expenses related thereto and such Joint Patent shall thereafter become the sole property of such Non-Prosecuting Party, provided that the Prosecuting Party shall retain a worldwide, royalty-free, perpetual, irrevocable non-exclusive license to such Patent, with the right to sublicense to Affiliates, solely for the purpose of continuing such Party’s independent development, commercialization and other exploitation of its Single Agent Compound (alone or in combination with other pharmaceutical agents), subject to the provisions of Section 8.4 of this Agreement. (ii) If one Party wishes to file a Joint Patent and the other party (which consent Party does not, the Party wishing to file shall have the right to elect to do so at its own expense and the other Party shall execute such documents and perform such acts at its own expense as may be withheld reasonably necessary to effect an assignment of its rights in such Joint Patent to the electing Party in a timely manner so as to allow the electing Party to file such Joint Patent. The other Party shall cooperate fully and provide the electing Party with any documents, information or assistance reasonably necessary to file such Joint Patent. If the electing Party is Idenix, the Joint Patent shall be deemed an Idenix Patent, and if the electing Party is ▇▇▇▇▇▇▇, the Joint Patent shall be deemed a ▇▇▇▇▇▇▇ Patent, provided that in each case the other Party shall retain a worldwide, royalty-free non-exclusive license to such Patent, with the right to sublicense to Affiliates, solely for any reasonthe purpose of continuing such Party’s independent development, commercialization and other exploitation of its Single Agent Compound (alone or in its sole and absolute discretioncombination with other pharmaceutical agents), assign or otherwise transfer its interest in any Joint Invention, except as expressly provided hereinsubject to the provisions of Section 8.4 of this Agreement.

Joint Inventions. (a) Inventions developedThe Parties agree to cooperate in determining whether patent protection is desirable for any given Joint Invention, conceived or first reduced and if it is agreed that a patent application should be filed, the Parties shall cooperate and share the expenses incurred in the filing and prosecution of any patent application relating to practicea Joint Invention. If any Party elects not to file and prosecute a patent application relating to a Joint Invention, as those terms are used before such Party shall immediately notify the U.S. Patent other Party in writing within a reasonable period of time of such decision and Trademark Officethe other Party shall have the right but no obligation to file and prosecute the patent application, by statute and under common lawat its sole expense, jointly by for such Joint Invention. The non-filing Party will have not input into the parties (prosecution of the "patent application for such Joint Inventions"Invention(s), will except as required to assist the filing Party with the prosecution of the patent application(s). The ownership rights of a non-filing Party with respect to a Joint Invention and the right to practice same shall not be jointly owned affected by the parties, each party having an equal such Party's election to not file and undivided interest therein, without the duty to account to the other for any use made of such Joint Inventionsprosecute a patent application therefor. Notwithstanding the foregoing, neither party may use (i) Inhibitex shall have the exclusive, worldwide, fully paid, royalty free right to practice Joint Inventions to make and have made those of its produces that use antibodies against cell surface adhesins (the "Inhibitex Field") and (ii) AVID shall have the exclusive, worldwide, fully paid, royalty free right to practice Joint Inventions to make and have made monoclonal antibodies (other than antibodies against cell surface adhesion) (the "AVID Field"). Inhibitex agrees that it shall not license, exclusively or non-exclusivity, or assign or transfer, any of its rights in the Inhibitex Field with respect to any way which would harm the other's ownership interest therein. The parties agree Joint Invention to mutually determine whether a patent application any third party, (a) except that Inhibitex may assign or applications will be filed on license such Joint Inventions, the party which will prepare rights only as necessary to have manufactured its products that use antibodies against cell surface adhesins and file such application or applications, and the country or countries in which the same are to be filed. The patent expenses incurred will be divided equally between the parties. (b) If except in the parties are not able to mutually agree to file context of an application or applications on a Joint Invention, either one of the parties may elect to assume such expenses (the "Electing Party"). The Electing Party will control the preparation and prosecution of any such application and all rights in any patents granted thereon will belong exclusively to the Electing Party. The party declining to bear its share of the expenses of prosecuting or maintaining patents covering a Joint Invention (the "Declining Party") agrees to execute any and all forms, assignments or other documents to effect the foregoing; provided, however, that the Declining Party will *** *** Portions assignment of this page have been omitted pursuant to a request for Confidential Treatment and filed separately with the commission. *** *** ; provided further, however, that such Declining Party will *** *** or the U.S. Government. Neither party may, without the prior written consent of the other party (which consent may be withheld for any reason, in its sole and absolute discretion), assign or otherwise transfer its interest in any Joint Invention, except as expressly provided hereinAgreement.