Master Alliance Provisions Guide (MAPGuide)

DNDi – BioDelivery Sciences International, Visceral Leishmaniasis Research Collaboration Agreement

  • Intellectual Property | Ownership of IP

Definitions

“BDSI Background IP” means (a) any Patents or patent applications either granted or filed by BDSI and which are necessary or useful in the optimization, development, manufacturing, or distribution of CAMB and (b) any Know-How developed by or on behalf of BDSI which relates to CAMB.

“Collaboration IP” means (a) any Know-How made, developed or conceived under the R&D Plan according to this Agreement in each case solely or jointly by an employee, consultant or agent of DNDi or BDSI or their respective Affiliates, subcontractors or sublicensees, (b) any Patents describing, claiming or covering the Know-How developed according to section 1.6, a, and (c) any other intellectual property rights in or to such Know-How

6. INTELLECTUAL PROPERTY

6.1 Ownership of Collaboration IP

(a) All Collaboration IP which is made, developed or conceived jointly by employees, consultants or agents of both Parties or their respective Affiliates, subcontractors or sublicensees will be jointly owned by both Parties and if any part of such Collaboration IP is patentable, both Parties, through the Alliance Managers, shall select by mutual agreement in writing the Party which will file and prosecute the relevant Patents, in its own name and at its own cost (“the Filing Party”) and the other Party (“the Non–Filing Party”) will assign to the Filing Party all its rights, title and interest in and to the Collaboration IP and will agree to provide the Filing Party with all consents and assistance as may be reasonably requested by the Filing Party to perfect its rights in the relevant Patents in return for the Filing Party granting the other Party a license according to section 4.

(b) All Collaboration IP which is made, developed or conceived solely by employees, consultants or agents of either Party or its Affiliates, subcontractors or sublicensees shall be solely owned by such Party (“DNDi Collaboration IPR” or “BDSI Collaboration IPR”), and if any part is patentable, such Party shall be solely entitled to file and prosecute any relevant Patent, in its own name and at its own cost, provided that the non–Filing Party will be automatically granted a license to such Collaboration IP according to section 4.

6.2 Disclosure of Inventions. On a quarterly basis in accordance with Section 2.7 (b), each Party will disclose in writing to the JRC all Know-How and inventions made, developed, conceived or reduced to practice, either in the course of or arising directly out of the performance of such Party’s obligations under the R&D Plan, or any activities under this Agreement, by or on behalf of such Party or its employees, consultants, Affiliates, agents, subcontractors or sublicensees. Each Party will ensure that each of its Affiliates’ employees, agents, consultants and subcontractors conducting activities under the R&D Plan has a contractual obligation to disclose all such inventions and, to assign all intellectual property rights developed thereunder.