Provision Language
Definitions
“Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice by one or both Parties (or on their behalf) during the performance of the Research Program. Collaboration Technology includes Partner Collaboration Technology, DNDi Collaboration Technology and Joint Collaboration Technology.
“DNDi Background Technology” shall mean any Technology that: a) is owned by or licensed to DNDi or its Affiliates by any Third Party with a right to sublicense; b) exists as of the Effective Date or is made, developed, conceived and reduced to practice, thereafter by DNDi (or on its behalf) or its licensor outside the scope of this Agreement; and c) is necessary or useful for the Partner to perform the activities under the Research Program and to exercise the licenses granted hereunder.
“DNDi Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice solely by DNDi (or on its behalf) during the performance of the Research Program.
“Joint Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice jointly by the Parties (or on their behalf) during the performance of the Research Program.
“Partner Background Technology” shall mean any Technology that: a) is owned by or licensed to Partner or its Affiliates by any Third Party with a right to sublicense; b) exists as of the Effective Date or is made, developed, conceived and reduced to practice, thereafter by Partner (or on its behalf) or its licensor outside the scope of this Agreement; and c) is necessary or useful for DNDi to perform the activities under the Research Program and to exercise the licenses granted hereunder.
“Partner Collaboration Technology” shall mean any Technology that is made, developed, conceived and reduced to practice solely by Partner (or on its behalf) during the performance of the Research Program.
13. OWNERSHIP OF TECHNOLOGY
13.1 All rights in, title to and interest in the DNDi Background Technology and DNDi Collaboration Technology shall be owned by DNDi. DNDi assumes full responsibility (but not the obligation), including financial responsibility, for filing, prosecution and maintenance of any Patent Rights constituting DNDi Background Technology and DNDi Collaboration Technology.
13.2 All rights in, title to and interest in the Partner Background Technology and the Partner Collaboration Technology shall be owned by Partner. Partner assumes full responsibility (but not the obligation), including financial responsibility, for filing, prosecution and maintenance of any Patent Rights constituting Partner Background Technology and the Partner Collaboration Technology.
13.3 All rights in, title to and interest in the Joint Collaboration Technology shall be jointly owned by Partner and DNDi.
13.4 In the event of a dispute between DNDi and Partner over inventorship, such dispute shall be resolved by patent counsel selected by the JRC who (and whose firm) is not at the time of the dispute, and was not at any time during the five (5) years prior to such dispute, performing services for either of the Parties. The Parties shall share equally the expenses of such patent counsel and inventorship determination.
13.5 Each Party shall promptly disclose, and shall cause its Affiliates and CSPs to disclose, to the other Party, in writing, the development, making, or reduction to practice of any Collaboration Technology. Each Party shall take all necessary and proper acts to effectuate the ownership provisions provided in this Article 13.
13.6 If a Party elects to file, prosecute and maintain Patent Rights based upon its Collaboration Technology, the other Party will reasonably cooperate with that Party, at the owning Party’s expense.
13.7 If a Party owning any patentable Collaboration Technology decides not to file, prosecute and/or maintain any Patent Rights based upon its Collaboration Technology, said Party shall inform the other Party. The Party owning the Collaboration Technology may, upon request of the other Party, assign all right, title and interest to the other Party for filing, prosecuting and/or maintaining the patent application upon terms to be discussed in good faith. The Party owning the Collaboration Technology shall not be obligated to enter into such an agreement or to engage in such transaction.
13.8 It is understood that, as of the Effective Date, DNDi’s policy with regard to Technology is that it should be accessible to all interested persons to foster DNDi’s Mission.
13.9 With respect to Joint Collaboration Technology, each Party has the right to file, prosecute and/or maintain Patent Rights. Each Party will promptly inform the other Party whether it is willing to exercise such rights. In the event that both Parties are willing to exercise such rights, the JRC will:
a) determine the countries in which Patent Rights on Joint Collaboration Technology will be filed;
b) determine the Party that will take responsibility for filing, prosecution and maintenance of Patent Rights on the Joint Collaboration Technology (“Responsible Party”), and the Party that will cooperate reasonably in same; and
c) determine the Parties’ share in the costs of same.
13.10 The Responsible Party will inform the other Party at least once a year about the status of Patent Rights on Joint Collaboration Technology.
13.11 If a Party does not wish to seek and maintain protection of the Joint Collaboration Technology through Patent Rights, then such Party shall not share the costs of patent application filing, prosecution and maintenance, but shall remain joint owner of such Patent Rights pursuant to Section 13.3.
13.12 Neither Party shall be liable to the other Party if any Patent Rights in any Collaboration Technology are not granted by the competent authorities.