Provision Language
Definitions
“AlCana Collaboration IP” means the collective reference to AlCana Program Developments and AlCana’s interest in Joint Program Developments.
“AlCana Program Developments” means any Program Developments developed, discovered, conceived and/or reduced to practice solely byAlCana’s Program Participants.
“AlCana Technology” means any and all Intellectual Property and Patent Rights Controlled by AlCana that are (a) owned, developed or obtained by AlCana prior to the Effective Date or independent of this Agreement, and (b) necessary for the conduct of the Research Program. Program Materials or Program Developments do not include AlCana Technology.
“Alnylam Technology” means any and all Intellectual Property and Patent Rights Controlled by Alnylam that are (a) owned, developed or obtained by Alnylam prior to the Effective Date or independent of this Agreement, and (b) necessary for the conduct of the Research Program. Program Materials or Program Developments do not include Alnylam Technology.
“Background Technology” means the collective reference to AlCana Technology, Alnylam Technology and UBC Technology.
“Field of Use” means the delivery of any form of oligonucleotides or other nucleic acid constructs for any and all purposes, including without limitation single–stranded and double–stranded DNA and RNA molecules with and without chemical modifications and plasmids and the delivery of oligonucleotides that target microRNAs, but excluding (i) the delivery of single–stranded DNA oligonucleotides acting through the RNase H mechanism (“Antisense”) and (ii) DNA plasmids that are directly transcribed and translated into therapeutic proteins and wherein the pharmacological activity is dependent on expression of the plasmid–encoded protein (“Gene Therapy”). For purposes of clarity, Gene Therapy (a) does not include plasmids that are intended to result in the production of oligonucleotides that act through any other mechanism than translation into protein, and (b) specifically excludes, among other things, plasmids that are intended to result in the production of oligonucleotides that act through any other mechanism.
“Program Development” means any (a) Program Technology and (b) any Patent Rights that disclose or claim Program Technology.
“Joint Program Developments” means any Program Developments conceived and/or reduced to practice jointly by a Party’s Program Participants and another Party’s (or Parties’) Program Participants.
“Program Technology” means any Intellectual Property (a) conceived and/or reduced to practice by Program Participants under the Research Program during the Research Term or within [**] months of the end thereof, or (b) arising out of research conducted under the Research Program during the Research Term or within [**] months of the end thereof with funding provided by Alnylam under this Agreement. Program Technology does not include any Background Technology.
“UBC Technology” means any and all Intellectual Property or Patent Rights Controlled by UBC that are (a) owned, developed or obtained by UBC prior to April 13, 2009 or independent of this Agreement, and (b) necessary for the conduct of the Research Program.
7. Program Developments and Program Materials
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7.3 Ownership of Program Developments and Program Materials. Inventorship of all Program Developments will be determined in accordance with United States patent law. Subject to Section 8.1 below, ownership of all Program Developments will follow inventorship. Each of Alnylam, AlCana and UBC will require each of their Program Participants to assign to such Party, respectively, all of their Program Participants’ right, title and interest in any Program Developments. Each of Alnylam, AlCana and UBC agrees from time to time to execute and deliver all such further documents and instruments and do all acts and things as a Party may reasonably require to carry out or better evidence or perfect the full intent and meaning of this Section. Except to the extent a Party is restricted by the rights granted to the other Parties and covenants contained herein and in the Supplemental Agreement, including without limitation Section 10.5 and the conditions of assignment described in Section 13.3, each Party shall be entitled to assign, transfer, license and practice, and otherwise to grant to Third Parties or its Related Parties the right to practice, inventions claimed in a Joint Program Development without restriction or an obligation to account to the other Parties.
8.Collaboration IP
8.1 AlCana Collaboration IP. Subject to the terms and conditions of this Agreement and the Supplemental Agreement, AlCana hereby assigns to UBC all of AlCana’s right, title and interest in and to all AlCana Collaboration IP, solely in the Field of Use (the “Field–Restricted Assignment”). AlCana retains all other right, title and interest in the AlCana Collaboration IP. AlCana and UBC will take such steps as Alnylam may reasonably request (at Alnylam’s expense) to vest in UBC such ownership of the AlCana Collaboration IP, including without limitation, execution by AlCana of an assignment agreement for the benefit of UBC in form and substance satisfactory to Alnylam and UBC, and the prompt, proper recordation thereof with the Patent and Trademark Office in the United States and in such other patent offices in those countries in the remainder of the world as Alnylam may request. UBC may not use, assign, license or otherwise transfer its interest in AlCana Collaboration IP except as explicitly set forth in this Agreement or the Supplemental Agreement. In consideration for the Field–Restricted Assignment, UBC, as Payee under this Agreement, shall pay AlCana that portion of the milestone and royalty payments received by Payee as consideration for the License of AlCana Collaboration IP, as set forth in Exhibit B. For clarity, after due diligence and full consideration, each Party hereto acknowledges that the Field–Restricted Assignment was given for good and valuable consideration, the sufficiency of which is hereby acknowledged, and that such consideration represents the fair market value for such Field–Restricted Assignment.