Master Alliance Provisions Guide (MAPGuide)

Academic Institution – Company, Research Collaboration Agreement

  • Intellectual Property | Protection of IP

8. Intellectual Property

8.6 Patent protection of Project IP.

i) Prior notice of filing. Without limiting any Party’s obligations to the funder, a draft abstract of any patent application claiming any invention within the Project IP will be promptly reported to the other Parties no later than one (1) month prior to filing, and the filing Party will provide (in confidence) a copy of any such initial draft application to any requesting Party. It is understood that no Party is obliged to draft or file or continue the prosecution of patent applications directed to Project IP. If a Party who solely invents any Project IP does not intend to file a patent application to protect such Project IP or continue the prosecution of a patent application once filed, it shall promptly notify all other Parties of this fact, and, then those Parties who are willing to undertake such Patent Activities (as defined in Section 8.6(iii)) will be permitted to do so at their expense. In such cases, the Party who invented that Project IP will reasonably cooperate with the other Parties who agree to undertake such Patent Activities, at such other Parties’ expense.

ii) Prosecution of solely owned Project IP. Without limiting any Party’s obligations to the funder, subject to Section 8.6(i), a Party that solely owns any invention within the Project IP has sole right, but not the obligation, to draft, file, prosecute, maintain, extend, defend and enforce patent application(s) claiming such solely owned Project IP, at its sole expense, and without having to account to any other Party.

iii) Prosecution of jointly owned Project IP. If any invention in Joint Project IP is jointly owned between one or more Institute and only one Company (except for Joint Project IP covering any Protein Vaccine Product), then that Company will have the first right to draft, file, prosecute, maintain, extend, defend and enforce patent application(s) (“Patent Activities”) claiming such Joint Project IP. Should such Company not wish to have the responsibility for the Patent Activities, then it shall promptly notify the other co-owning Institute(s) who shall then have the right to conduct such activities. If any invention in Joint Project IP is jointly owned between two or more Companies, then they shall promptly discuss and agree which Company will have the first and which the second right to conduct the Patent Activities; and if neither wish to have the responsibility for such activities, then they shall inform any co-owning Institute(s) who shall then have the right to conduct the Patent Activities, save that in relation to Joint Project IP covering any … Vaccine Product, Com1 will have the first right to conduct Patent Activities with respect thereto; in relation to Joint Project IP covering any … Vaccine Product, the Institutes will have the first right to conduct Patent Activities with respect thereto, and in relation to Joint Project IP covering any ……… Product, Com2 and A will have the first right to conduct Patent Activities with respect thereto, subject to any agreement between Com2 and A on allocation of such responsibilities. If any invention in Joint Project IP is jointly owned only between two or more Institutes, then they shall promptly discuss and agree which Institute will have the first and which the second right to conduct the Patent Activities with respect thereto. The documented reasonable expenses of all Patent Activities in respect of Joint Project IP will be shared equally between the co-owning Parties of such Joint Project IP (with the exception of Joint Project IP relating solely to … Vaccine Products or …… Products for which such reasonable expenses will be paid for by Com1 and Com2/A respectively); provided however, that should a co-owning Party not wish to incur such expense then it shall promptly notify the other Parties accordingly then the notifying Party shall have no further financial obligations or control in relation to the conduct of the Patent Activities. The Party conducting Patent Activities for Joint Project IP (a) will mutually select with the other co-owning Parties the outside patent counsel who will perform the Patent Activities for such Parties, (b) shall keep the other owning Parties fully informed of all actions taken with respect to such patent applications, and any resulting patents, (c) will provide those Parties with copies of all patent applications, amendments, office actions and all other material correspondence and documents sufficiently in advance of due dates for responses to such matters, as well as a reasonable opportunity to review and comment on all actions taken, and (d) shall consider in good faith all reasonable and timely comments made by the other co-owners.