Common use of R&D Intellectual Property Rights Clause in Contracts

R&D Intellectual Property Rights. Subject to the licenses granted in Sections 7.4(a), 7.4(b), 7.4(d) and 7.4(f) hereto, Intellectual Property rights in any inventions, improvements, or technologies conceived or reduced to practice during the term of this Restated Agreement pursuant to a Jointly Funded ARA Research Project (“New R&D Inventions”) shall be as follows: (i) Any patent and/or patent application filed by a Patent Proponent Party (as defined below) in accordance with Section 7.3(a)(ii) shall be owned solely by the Patent Proponent Party (“Martek R&D Patents” or “DSM R&D Patents,” as the case may be). (ii) Subject to clause (i) above, the parties shall jointly own any patents or patent applications that may be filed or issue on any New R&D Inventions (each party having an equal and undivided one half ownership interest without a right of accounting, except as expressly provided herein) (“Joint Patents”) and all other Intellectual Property rights in New R&D Inventions regardless of which parties’ employees invented or created such New R&D Invention (“Joint Know-how”). Each party shall, and shall cause its employees, consultants, and contractors to, execute any and all documents required in order that each party shall own and, if applicable, shall be registered as the owner of the New R&D Invention in accordance with Section 7.2(b). All rights in and to the New R&D Inventions shall be subject to this Restated Agreement. (iii) For the avoidance of doubt, during the term of this Restated Agreement (A) each of Martek and its Affiliates shall have (1) the exclusive right to use all Joint Proprietary Technology within the Martek ▇▇▇ ▇▇▇▇▇▇ of Use, (2) the non-exclusive right to use all Joint Proprietary Technology outside of the DSM ▇▇▇ ▇▇▇▇▇▇ of Use subject to Section 7.2(b)(iv)(A), and (3) no right to use, make or have made, offer to sell, sell, import, or otherwise exploit, or permit others to use, make or have made, offer to sell, sell, or otherwise exploit the Joint Proprietary Technology in DSM’s ▇▇▇ ▇▇▇▇▇▇ of Use and (B) each of DSM and its Affiliates shall have (1) the exclusive right to use all Joint Proprietary Technology within the DSM ▇▇▇ ▇▇▇▇▇▇ of Use, (2) the non-exclusive right to use all Joint Proprietary Technology outside of the Martek ▇▇▇ ▇▇▇▇▇▇ of Use subject to Section 7.2(b)(iv)(A), and (3) no right to use, make or have made, offer to sell, sell, import, or otherwise exploit, or permit others to use, make or have made, offer to sell, sell, or otherwise exploit the Joint Proprietary Technology in Martek’s ARA Field of Use. Notwithstanding the foregoing, except as expressly set forth in Section 9.3, nothing contained in this Restated Agreement shall extend DSM’s rights to the Excluded Subject Matter outside the DSM ▇▇▇ ▇▇▇▇▇▇ of Use. Moreover, unless expressly agreed upon by the parties, subject to Section 10.4 hereto, nothing herein shall be deemed to grant either party any rights in any trademarks or previously existing copyrighted work of the other party, notwithstanding the use of such materials in any Jointly Funded ARA Research Project. Notwithstanding the foregoing neither party shall sublicense Production Technology without the other party’s prior written consent except pursuant to Sections 3.3(a), 3.4(c), and 5.5(d). * The asterisk denotes that confidential portions of this exhibit have been omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The confidential portions have been submitted separately to the Securities and Exchange Commission (iv) If either party is in serious negotiations with a non-Affiliate third party regarding the sublicensing of its rights to the Joint Proprietary Technology in an area where it has non-exclusive rights to such Joint Proprietary Technology in accordance with Section 7.2(b)(iii)(A)(2) or 7.2(b)(iii)(B)(2) (“Sublicensable Technology”), such party shall provide written notice to the other party of such negotiations. If such party decides to sublicense its rights pursuant to such negotiations (such party to hereinafter be referred to as the “Sublicensing Requester”), then the Sublicensing Requester must provide the other party prior written notice summarizing the proposed sublicensing arrangement for the Sublicensable Technology (“Sublicensing Notice”). (A) The non-requesting party shall have the right to prevent such sublicense by (1) within thirty (30) days of receiving the Sublicensing Notice, notifying the Sublicensing Requester of its disapproval of the sublicense and its desire to have the exclusive right to sublicense the Joint Proprietary Technology outside the DSM ▇▇▇ ▇▇▇▇▇▇ of Use and the Martek ▇▇▇ ▇▇▇▇▇▇ of Use and (2) committing within thirty (30) days of the determination of the fair-market value (“FMV”) of such exclusive right to pay to the Sublicensing Requester the FMV, which is to be determined pursuant to agreement of the parties or pursuant to Section 8.6 if agreement is not reached within ten (10) days. (B) If the non-requesting party does not notify the Sublicensing Requester of its disapproval within thirty (30) days from receiving the Sublicensing Notice or does not pay the FMV of the sublicense to the Sublicensing Requester within thirty (30) days from determination of the FMV amount, the Sublicensing Requester shall have the right to proceed with such sublicense on substantially the same terms and conditions as set forth in the Sublicensing Notice and the Sublicensing Requester shall pay the other party, as applicable, (1) * of the Net Revenues the Sublicensing Requester receives from the sublicensee which are not the result of the Sublicensing Requester selling a product to the sublicensee, and (2) * of the Net Sales the Sublicensing Requester receives from the sublicensee which are the result of the Sublicensing Requester selling a product to the sublicensee, provided, however, that such total amount shall not exceed * of the Sublicensing Requester’s Gross Profit on such sales. * The asterisk denotes that confidential portions of this exhibit have been omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The confidential portions have been submitted separately to the Securities and Exchange Commission (C) If the non-requesting party does not exercise its right to obtain exclusive rights to the Sublicensable Technology as set forth in Section 7.2(b)(iv)(A) and the Sublicensing Requester proceeds with the sublicensing arrangement for the Sublicensable Technology as set forth in the Sublicensing Notice, the Sublicensing Requester does not need to follow the procedures set forth in Section 7.2(b)(iv) again if it desires to enter into another sublicensing arrangement for the same Sublicensable Technology; however, if the Sublicensing Requester does not proceed with the sublicensing arrangement as set forth in the Sublicensing Notice and then subsequently desires to sublicense the same Sublicensable Technology to another potential sublicensee, the Sublicensing Requester must follow the procedures set forth in Section 7.2(b)(iv) again, including issuing a new Sublicensing Notice.

R&D Intellectual Property Rights. Subject to the licenses granted in Sections 7.4(a), 7.4(b), 7.4(d) and 7.4(f7.4(b) hereto, Intellectual Property intellectual property rights in any inventions, improvements, or technologies conceived or reduced to practice during the term of this Restated Agreement pursuant to a Jointly Funded ARA Research an approved Project Plan (“New R&D Inventions”) shall be as follows: (i) Any patent and/or patents that issue from a patent application filed by a Patent Proponent Party (as defined below) in accordance with Section 7.3(a)(ii7.3(a)(iii) shall be owned solely by the Patent Proponent Party (“Martek R&D Patents” or “DSM R&D Patents,” ”, as the case may be). (ii) Subject to clause (i) above, the parties shall jointly own any patents or patent applications that may be filed or issue on any New R&D Inventions (each party having an equal and undivided one half ownership interest without a right of accounting, except as expressly provided herein) (“Joint Patents”) and all other Intellectual Property intellectual property rights in New R&D Inventions regardless of which parties’ employees invented or created such New R&D Invention (“Joint Know-how”). Each party shall, and shall cause its employees, consultants, and contractors to, execute any and all documents required in order that each party shall own and, if applicable, shall be registered as the owner of the New R&D Invention in accordance with Section 7.2(b7.2(c). All rights in and to the New R&D Inventions shall be subject to this Restated Agreement. (iii) For the avoidance of doubt, during the term of this Restated Agreement (A) each of Martek and its Affiliates shall have (1) the exclusive right to use all Joint Proprietary Technology within the Martek ▇A▇▇ ▇▇▇▇▇▇ of Use, (2) the non-exclusive right to use all Joint Proprietary Technology outside of the DSM ▇A▇▇ ▇▇▇▇▇▇ of Use subject to Section 7.2(b)(iv)(A7.2(c)(iv)(A), and (3) no right to use, make or have made, offer to sell, sell, import, or otherwise exploit, or permit others to use, make or have made, offer to sell, sell, or otherwise exploit the Joint Proprietary Technology in DSM’s ▇A▇▇ ▇▇▇▇▇▇ of Use and (B) each of DSM and its Affiliates shall have (1) the exclusive right to use all Joint Proprietary Technology within the DSM ▇A▇▇ ▇▇▇▇▇▇ of Use, (2) the non-exclusive right to use all Joint Proprietary Technology outside of the Martek ▇A▇▇ ▇▇▇▇▇▇ of Use subject to Section 7.2(b)(iv)(A7.2(c)(iv)(A), and (3) no right to use, make or have made, offer to sell, sell, import, or otherwise exploit, or permit others to use, make or have made, offer to sell, sell, or otherwise exploit the Joint Proprietary Technology in Martek’s ARA Field of Use. Notwithstanding the foregoing, except as expressly set forth in Section 9.3, nothing contained in this Restated Agreement shall extend DSM’s rights to the Excluded Subject Matter outside the DSM ▇A▇▇ ▇▇▇▇▇▇ of Use. Moreover, unless expressly agreed upon by the parties, subject to Section 10.4 hereto, nothing herein shall be deemed to grant either party any rights in any trademarks or previously existing copyrighted work of the other party, notwithstanding the use of such materials in any Jointly Funded ARA Research Projectapproved Project Plan. Notwithstanding the foregoing neither party shall sublicense Production Technology without the other party’s prior written consent except pursuant to Sections 3.3(a), 3.4(c), ) and 5.5(d). * The asterisk denotes that confidential portions of this exhibit have been omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The confidential portions have been submitted separately to the Securities and Exchange Commission. (iv) If either party is in serious negotiations with a non-Affiliate third party regarding the sublicensing of its rights to the Joint Proprietary Technology in an area where it has non-exclusive rights to such Joint Proprietary Technology in accordance with Section 7.2(b)(iii)(A)(27.2(c)(iii)(A)(2) or 7.2(b)(iii)(B)(27.2(c)(iii)(B)(2) (“Sublicensable Technology”), such party shall provide written notice to the other party of such negotiations. If such party decides to sublicense its rights pursuant to such negotiations (such party to hereinafter be referred to as the “Sublicensing Requester”), then the Sublicensing Requester must provide the other party prior written notice summarizing the proposed sublicensing arrangement for the Sublicensable Technology (“Sublicensing Notice”). (A) The non-requesting party shall have the right to prevent such sublicense by (1) within thirty (30) days of receiving the Sublicensing Notice, notifying the Sublicensing Requester of its disapproval of the sublicense and its desire to have the exclusive right to sublicense the Joint Proprietary Technology outside the DSM ▇A▇▇ ▇▇▇▇▇▇ of Use and the Martek ▇A▇▇ ▇▇▇▇▇▇ of Use and (2) committing within thirty (30) days of the determination of the fair-market value (“FMV”) of such exclusive right to pay to the Sublicensing Requester the FMV, which is to be determined pursuant to agreement of the parties or pursuant to Section 8.6 if agreement is not reached within ten (10) days. (B) If the non-requesting party does not notify the Sublicensing Requester of its disapproval within thirty (30) days from receiving the Sublicensing Notice or does not pay the FMV of the sublicense to the Sublicensing Requester within thirty (30) days from determination of receiving the FMV amount, the Sublicensing Requester shall have the right to proceed with such sublicense on substantially the same terms and conditions as set forth in the Sublicensing Notice and the Sublicensing Requester shall pay the other party, as applicable, (1) * of the Net Revenues the Sublicensing Requester receives from the sublicensee which are not the result of the Sublicensing Requester selling a product to the sublicensee, and (2) * of the Net Sales the Sublicensing Requester receives from the sublicensee which are the result of the Sublicensing Requester selling a product to the sublicensee, provided, however, that such total amount shall not exceed * of the Sublicensing Requester’s Gross Profit on such sales. * The asterisk denotes that confidential portions of this exhibit have been omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The confidential portions have been submitted separately to the Securities and Exchange Commission. (C) If the non-requesting party does not exercise its right to obtain exclusive rights to the Sublicensable Technology as set forth in Section 7.2(b)(iv)(A7.2(c)(iv)(A) and the Sublicensing Requester proceeds with the sublicensing arrangement for the Sublicensable Technology as set forth in the Sublicensing Notice, the Sublicensing Requester does not need to follow the procedures set forth in Section 7.2(b)(iv7.2(c)(iv) again if it desires to enter into another sublicensing arrangement for the same Sublicensable Technology; however, if the Sublicensing Requester does not proceed with the sublicensing arrangement as set forth in the Sublicensing Notice and then subsequently desires to sublicense the same Sublicensable Technology to another potential sublicensee, the Sublicensing Requester must follow the procedures set forth in Section 7.2(b)(iv7.2(c)(iv) again, including issuing a new Sublicensing Notice.