Common use of Product Improvements Clause in Contracts

Product Improvements. 12.1 For purposes of this Section, "Assay Improvement Invention" shall mean any invention conceived or reduced to practice by Buyer or its Affiliates during the Term using Affymetrix Probe Arrays that relates to manual or automated assay techniques that may be used in connection with Probe Arrays or similar products, but only insofar as such techniques are used for and after nucleic acid extraction and up to and including annealing and washing hybridization mixtures with a Probe Array, but not to techniques used thereafter. 12.2 For purposes of this Section, "Product Improvement Invention" shall mean any invention conceived or reduced to practice by Buyer or its Affiliates during or after the Term using Affymetrix Probe Arrays supplied to Buyer or its Affiliates during the Term that relates to (a) design, manufacturing, layout or packaging of nucleic acid probes or probe arrays; or (b) software techniques relating to the extraction or storage of data generated using Probe Arrays after samples have been annealed to the Probe Arrays (e.g., techniques used in generation of *.cel and *.dat files), but not including any techniques used thereafter (e.g., software techniques for analysis or other processing of data beyond what is required for generation of *.cel and *.dat files). Product Improvement Inventions also shall not (1) include data generated using Probe Arrays or discoveries derived therefrom (except as expressly set forth in (a) and (b) above} or (2) any Assay Improvement Invention, as defined herein. Neither Product Improvement Inventions nor Assay Improvement Inventions shall include (3) Target Sequences identified by Buyer as hereinafter described or (4) any discoveries or inventions made using data obtained from use of the Affymetrix Probe Arrays, including but not limited to, discoveries or inventions relating to identification of markers used in biological, toxicological and clinical applications, correlations between nucleic acid sequences and functions, targets for drug discovery and development and processes for determining and understanding toxicity. For clarification, such markers include without limitation, those derived from analysis of gene expression and genotyping data generated from Probe Arrays. 12.3 As used herein an invention conceived or reduced to practice "using Affymetrix Probe Arrays" means an invention that was actually made using such arrays. 12.4 For purposes of this Agreement, "Affymetrix Probe Array(s)" shall mean Probe Arrays for which Target Sequences have been selected by Affymetrix ("Affymetrix Target Sequences"), or jointly by Affymetrix and Buyer ("Buyer Target Sequences") for use on Probe Arrays to be supplied by Affymetrix as set forth below. 12.5 Except to the extent prohibited by applicable law, Buyer hereby grants to Affymetrix and its Affiliates a nonexclusive, worldwide, fully paid-up, royalty-free, irrevocable, perpetual license to all Product Improvement Inventions, with a right for Affymetrix and its Affiliates to sublicense but only to Affymetrix' and its Affiliates' partners and customers for use with Affymetrix Probe Arrays. Buyer need not disclose any Product Improvement Inventions to Affymetrix except as may be reasonably required to comply with the foregoing license. 12.6 If Buyer elects, at its sole discretion, to commercialize a product or process that embodies an Assay Improvement Invention for use by multiple unrelated parties, then to the extent that Buyer makes such product or process available to other parties, Buyer agrees to negotiate in good faith with Affymetrix (and, if necessary with Affymetrix customers and partners) to make each such product or process available to Affymetrix and all Affymetrix customers and partners for use with Affymetrix Probe Arrays on commercially reasonable terms comparable to those granted to other parties, provided that such terms may differ based on the type of party (e.g., non-profit vs. for-profit), the size of the party, the number of individual users or volume of use of the product or process, the size of the party's R&D budget, the type of use intended or other factors fairly applied, and, provided further, that this obligation to license on comparable terms shall not apply to licenses granted or products sold for limited uses, including evaluation, validation and testing or small sales for one-time or otherwise very limited use. For clarity, if Buyer elects to commercialize such product or process by making it available to others subject to restrictions or other terms that would preclude others from using such product or process in business activities that would directly compete with Buyer's business activities, then Buyer would not be obligated to make such product or process available to Affymetrix or Affymetrix customers or partners on terms that did not include the same restrictions or other terms precluding use of such products or processes that would directly compete with Buyer's business activities. 12.7 Notwithstanding the above, Buyer need not make available such Assay Improvement Invention to Affymetrix and all required Affymetrix customers and partners on comparable terms if a third party has already been granted in good faith by Buyer a conflicting assignment or license (or an option to obtain such an assignment or license) at or prior to the time the embodied Assay Improvement Invention is made. Buyer need not disclose Assay Improvement Inventions to Affymetrix until such time as Buyer has elected to commercialize such product or process and makes it available to multiple other parties.