Common use of Jointly Owned Clause in Contracts

Jointly Owned. (1) If the R&D Project is jointly funded by the parties and either: (1) OpNext Japan contributes fifty percent (50%) or more of the New Development Costs to the R&D Project; or (2) OpNext Japan contributes less than fifty percent (50%) of the New Development Costs to the R&D Project but the parties determine through good faith negotiations that OpNext Japan contributed to the R&D Project in some other fashion, and in both (1) and (2) above the resulting Intellectual Property can clearly be identified with reasonable certainty as that resulting from such R&D Project, then such Intellectual Property shall be deemed Jointly Developed Intellectual Property and shall be owned jointly by the parties and either party may practice such Jointly Developed Intellectual Property without an accounting or compensation to, or the consent of, the other party. Except as set forth in Section 4(c)(iii) below, if either party desires to license any of its rights to the Jointly Developed Intellectual Property herein to a third party, it shall obtain the prior written consent of the other party hereto. Each party shall have the right to apply, in both parties’ names, for Intellectual Property protection in the Jointly Developed Intellectual Property. The parties shall agree on the proper way and strategy for proceeding with all protection of the Jointly Developed Intellectual Property in accordance with the R&D Procedures. All expenses incurred in obtaining and maintaining Intellectual Property protection in the Jointly Developed Intellectual Property shall be equally shared by the parties. In the event that one (1) of the parties elects not to seek or maintain patent or other intellectual or industrial property protection for any Jointly Developed Intellectual Property in any particular country or not to share equally in the expenses thereof with the other party, the other party shall have the right to seek or maintain such protection at its sole expense in such country and shall have full control over the prosecution and maintenance thereof even though title to any patent or other intellectual or industrial property protection issuing therefrom shall be jointly owned by the parties. (2) To the extent OpNext Japan shares the costs of its proportion of the joint funding as described in (1) above, with either OpNext R&D-USA or any other Wholly-Owned Subsidiary of OpNext, Inc. for an R&D Project that is jointly funded by Hitachi and OpNext Japan, OpNext Japan shall have the right to license any Jointly Developed Intellectual Property arising from such R&D Project and the right to sublicense any Hitachi R&D IP associated with such Jointly Developed Intellectual Property, to OpNext R&D USA and such other Wholly-Owned Subsidiary of OpNext, Inc., as the case may be; provided, however, the following conditions are met: (i) OpNext Japan obtains Hitachi’s reasonable prior consent; and (ii) OpNext R&D-USA and such other Wholly-Owned Subsidiary of OpNext, Inc. abide by the terms and conditions of this R&D Agreement. Notwithstanding the foregoing, if any such license invokes any Japanese tax issues then Hitachi shall not be obliged to consent to such license to OpNext R&D-USA and/or such other Wholly-Owned Subsidiary of OpNext, Inc. without entering into a separate agreement with OpNext R&D-USA and/or such other Wholly-Owned Subsidiary of OpNext, Inc. under reasonable terms and conditions to be agreed upon between the relevant parties to address such tax issues. Notwithstanding the foregoing, neither OpNext R&D USA nor any such Wholly-Owned Subsidiary of OpNext, Inc. shall have any ownership rights in such Jointly Developed Intellectual Property.

Jointly Owned. (1) If the R&D Project is jointly funded by the parties and either: (1a) OpNext Japan contributes fifty percent (50%) or more of the New Development Costs to the R&D Project; or (2b) OpNext Japan contributes less than fifty percent (50%) of the New Development Costs to the R&D Project but the parties determine through good faith negotiations that OpNext Japan contributed to the R&D Project in some other fashion, and in both (1a) and (2b) above the resulting Intellectual Property can clearly be identified with reasonable certainty as that resulting from such R&D Project, then such Intellectual Property shall be deemed Jointly Developed Intellectual Property and shall be owned jointly by the parties and either party may practice such Jointly Developed Intellectual Property without an accounting or compensation to, or the consent of, the other party. Except as set forth in Section 4(c)(iii) below, if either party desires to license any of its rights to the Jointly Developed Intellectual Property herein to a third party, it shall obtain the prior written consent of the other party hereto. Each party shall have the right to apply, in both parties’ names, for Intellectual Property protection in the Jointly Developed Intellectual Property. The , subject to the following: (i) the parties shall agree on the proper way and strategy for proceeding with all protection of the Jointly Developed Intellectual Property in accordance with the R&D Procedures. All ; (ii) all expenses incurred in obtaining and maintaining Intellectual Property protection in the Jointly Developed Intellectual Property shall be equally shared by the parties. In ; and (iii) in the event that one (1) of the parties elects not to seek or maintain patent or other intellectual or industrial property Intellectual Property protection for any Jointly Developed Intellectual Property in any particular country or not to share equally in the expenses thereof with the other party, the other party shall have the right to seek or maintain such protection at its sole expense in such country and shall have full control over the prosecution and maintenance thereof even though title to any patent or other intellectual or industrial property Intellectual Property protection issuing therefrom shall be jointly owned by the parties. (2) To the extent OpNext Japan shares the costs of its proportion of the joint funding as described in (1) above, with either OpNext R&D-USA or any other Wholly-Owned Subsidiary of OpNext, Inc. OpNext for an R&D Project that is jointly funded by Hitachi and OpNext JapanProject, OpNext Japan shall have the right to license any Jointly Developed Intellectual Property arising from such R&D Project and the right to sublicense any Hitachi R&D IP associated with such Jointly Developed Intellectual Property, to OpNext R&D USA and such other Wholly-Owned Subsidiary of OpNext, Inc., as the case may be; provided, however, the following conditions are met: (i) OpNext Japan obtains Hitachi’s reasonable prior consent; and (ii) OpNext R&D-USA and such other Wholly-Owned Subsidiary of OpNext, Inc. abide OpNext abides by the terms and conditions of this R&D Agreement. Notwithstanding the foregoing, if any such license invokes any Japanese tax issues then Hitachi shall not be obliged to consent to such license to OpNext R&D-USA and/or such other Wholly-Owned Subsidiary of OpNext, Inc. OpNext without entering into a separate agreement with OpNext R&D-USA and/or such other Wholly-Owned Subsidiary of OpNext, Inc. OpNext under reasonable terms and conditions to be agreed upon between the relevant parties to address such tax issues. Notwithstanding the foregoing, neither OpNext R&D USA nor any such Wholly-Owned Subsidiary of OpNext, Inc. OpNext shall not have any ownership rights in such Jointly Developed Intellectual Property.