Common use of OWNERSHIP OF THE WORK Clause in Contracts

OWNERSHIP OF THE WORK. (a) HMC and CMI each acknowledge and agree that all Intellectual Property rights made or discovered pursuant to this Agreement made solely by both party's employees and with the use of that party's facilities, will solely be owned by that party, subject to the license option granted herein, and that any and all Intellectual Property rights made jointly by employees or on the facilities of both HMC and CMI pursuant to this Agreement will be jointly owned ("Joint Intellectual Property"), as determined in accordance with US laws of inventorship. (b) In the case of Joint Intellectual Property, CMI shall have a six (6) month option to obtain an exclusive, royalty-bearing license for such Joint Intellectual Property. Such six (6) month period shall begin to run from the date that CMI receives a written report from HMC as set out hereinbelow in Paragraph 4(d). The terms to obtain or license such Intellectual Property will be fairly based upon the amount of contribution made by HMC and its employees in the Invention. (c) In the case of wholly-owned HMC Intellectual Property, HMC grants to CMI a non-exclusive license to make, use or sell Intellectual Property developed at HMC under the terms of this Agreement under either of the following conditions: 1) CMI has background patent rights to the Intellectual Property, or 2) the invention physically attaches to the Robotic System. CMI shall have a six (6) month option to obtain an exclusive, royalty bearing license for such Intellectual Property. Such six (6) month period shall begin to run from the date that CMI receives a written report from HMC as set out hereinbelow in Paragraph 4(d). The terms to obtain or license such Intellectual Property will be fairly based upon the standard rates for the industry, and shall include the right of reassignment of the Intellectual Property to CMI. (d) The form of compensation contemplated under Paragraphs 4(b) and (c) shall be royalty payments on sales of the Robotic System incorporating the improvement. In order to allow an evaluation of the modification, improvement or enhancement, HMC will submit a written report describing in reasonable detail the nature of the Improvements which may be compensable under the terms of Paragraphs 4(b) and (c). Such report shall be presented to CMI not more than forty-five (45) days after the origination of the idea or concept relating to the Robotic System or the Technology. CMI shall have sole and exclusive right to prosecute and maintain any and all patents arising from the activities contemplated by this Agreement, including any Improvement. (e) HMC acknowledges that no such title to any such enhancements, modifications, improvements, updates or derivative works made by HMC to the Technology, and related documentation, is granted under this Agreement, and that no such assertion shall be made by HMC. In addition, CMI will not be estopped from utilizing written technical information relating to the Technology or the Robotic System which may be developed solely by HMC or jointly by both parties. Notwithstanding anything to the contrary in this Paragraph 4(e), HMC shall not assign or sublicense its right to develop, modify and enhance the Technology to any entity (other than a subsidiary of HMC or any entity into which HMC merges or which acquires substantially all of the stock or assets of HMC) without the prior written consent of CMI, which shall not be unreasonably withheld. (f) The provisions of this Section 4 shall survive termination or cancellation of this Agreement.