“Background Intellectual Property” or “Background IP”, in respect of a Party, means any and all Intellectual Property used to perform the Project, and that is controlled by such Party on the Effective Date or during the term of the Project but created outside the scope of the Project. For the avoidance of doubt, Background IP does not include Project IP. The Background IP of each Party on the Effective Date is identified in Appendix C attached to and made a part of this Agreement. Notwithstanding the provisions of Section 23, each Party may amend the identification of its Background IP in Appendix C from time to time by providing notice to that effect to the other Parties.
8. Intellectual Property
8.1 IP ownership
i) Background IP. All rights and title to the Background IP of each Party are owned solely by such Party, subject only to the licenses that are granted to the other Parties in accordance with Section 8.2.
(ii) Project IP.
- Subject to Section 8.1(ii)(2), if Project IP is conceived or reduced to practice (in the case of patentable Project IP), authored (in the case of Project IP subject to copyright) or contributed to (in the case of all other forms of Project IP) during activities carried out under the Research Plan solely by or on behalf of a single Party, then such Party solely owns such Project IP. If Project IP is conceived or reduced to practice, authored or contributed to, as the case may be during activities carried out jointly by or on behalf of two (2) or more Parties under the Research Plan, then such Parties jointly and equally own such Project IP (“Joint Project IP”), unless otherwise agreed between them. Inventorship of Project IP is determined in accordance with applicable national law where the invention is made.
- As indicated in the Research Plan … immunogens and vaccines based on…’s technology will be transferred from ….. to …. Com1 and Com2 agree that any sole or joint Project IP that arises from Com1’s use of such … immunogens or vaccines that is (a) a Com1 Improvement shall be solely owned by Com1 or (b) a Com2 Improvement shall be solely owned by Com2. Com2 will promptly inform Com1 of any inventions or other significant developments arising from its use of such …. immunogens or vaccines and Com1 and Com2 will determine in good faith if such development is a Com2 Improvement.
- As necessary to effect the provisions of Sub-Sections 8.1(ii)(2), Com2 will in the case of sub-Section 8.1(ii)(2)(a) either (a) promptly assign and transfer to Com1 its rights, interest and title to such Project IP or (b) waive any legal or equitable interest in such Project IP; and Com1 will in the case of Sub- Section 8.1(ii)(2)(b) either (a) promptly assign and transfer to Com2 its rights, interest and title to such Project IP or (b) waive any legal or equitable interest in such Project IP. In the event of such an assignment or waiver, Com2 (in the case of Sub-Section 8.1(ii)(2)(a)) or Com1 (in the case of Sub- Section 8.1(ii)(2)(b)), will make or procure all necessary documentation from its personnel as are necessary to give effect to Sub-Sections 8.1(ii)(2) and to assist the other Party in every way reasonably required to obtain, enforce or defend patent protection in respect of the interest in Project IP assigned or waived, such as the case may be. The provision of such documents or assistance from Com2 or Com1 may be subject to reasonable compensation for the actual costs incurred by the other Party. Furthermore, Com2 (in the case of Sub-Section 8.1(ii)(2)(a)) or Com1 (in the case of Sub-Section 8.1(ii)(2)(b)), will execute and deliver all such documents, instruments and other papers and take all such other action which the other Party may reasonably request in order to effect the provisions of Sub- Sections 8.1(ii)(2) and (3).
- If any Party believes that an improvement to its Background IP has been made by another Party, the relevant Parties shall discuss in good faith the disposition of ownership or licensing of such improvement. In the event of a dispute regarding whether or not Project IP is an improvement, the relevant Parties shall discuss and resolve the question in good faith.