Common use of New Inventions Clause in Contracts

New Inventions. Outside the Field. -------------------------------- (a) GLADSTONE/Regents shall promptly disclose to CNPI any New Inventions outside the Field arising under this Agreement. The Party to whom such New Invention is disclosed agrees to hold such disclosure on a confidential basis. (b) To the extent that GLADSTONE and The Regents have the legal right to do so, CNPI shall be entitled to an exclusive license to GLADSTONE's and Regents' interest in each New Invention outside the Field on terms to be negotiated in good faith between the Parties as set forth herein. CNPI agrees to notify GLADSTONE/Regents in writing within ninety (90) days of disclosure of the applicable New Invention outside the Field as to whether or not it wishes to negotiate a license to such New Invention. Upon CNPI's affirmative election to negotiate a license, GLADSTONE/Regents agree to negotiate in good faith with CNPI for a period of one hundred and eighty (180) days to conclude, at CNPI's option, either a license or option agreement for such New Invention. Such license or option agreement shall include reasonable terms typically found in licensing agreements and provide for diligent development of the New Invention and CNPI's obligation to reimburse GLADSTONE/Regents for patent expenses incurred by GLADSTONE/Regents with respect to such New Invention up to and including the effective date of such license or option agreement. If, at the end of such one hundred and eighty (180) day period, CNPI and GLADSTONE/Regents are unable to agree on terms for the license or option agreement, then, unless the Parties agree to extend the negotiation period, CNPI shall promptly deliver to GLADSTONE/Regents a final proposal detailing the terms on which it would enter into such an agreement (the "Final Proposal"). GLADSTONE/Regents shall have thirty (30) days from receipt of the Final Proposal to notify CNPI of its willingness to enter into an agreement on such terms. If GLADSTONE/Regents does not so notify CNPI, then GLADSTONE/Regents shall be free to dispose of the relevant New Invention in accordance with GLADSTONE/Regents' policy; provided, however, that, for a period of two (2) years from the expiration of such thirty (30) day period, if GLADSTONE/Regents proposes to enter into any such arrangement with a third party on the terms set forth in the Final Proposal or on terms more favorable to the third party than the terms contained in the Final Proposal, then (i) GLADSTONE/Regents shall deliver to CNPI a notice specifying such terms (an "Offer Notice"), (ii) CNPI shall have fifteen (15) days from receipt of the Offer Notice to either waive its first refusal right or notify GLADSTONE/Regents of its desire to negotiate in good faith a definitive agreement reflecting such terms (the "Acceptance Notice") and (iii) if, at the end of thirty (30) days from the Acceptance Notice, CNPI and GLADSTONE/Regents fail to enter into a definitive agreement reflecting such terms, then the parties shall submit any disputed issues regarding such agreement to binding arbitration pursuant to Section 10.1 hereof. If CNPI waives its first refusal right with respect to the terms set forth in the Offer Notice or fails to deliver to GLADSTONE/Regents an Acceptance Notice within the requisite fifteen (15) day period, then GLADSTONE/Regents shall be free to enter into an arrangement for the relevant New Invention with a third party, the terms of such arrangement to be no more favorable to the third party than those set forth in the Offer Notice if entered into during the aforementioned two (2) year period. (c) If CNPI elects not to secure a license, then rights to such New Invention may be disposed of by GLADSTONE/Regents with no further obligation to CNPI.