Provision Language
Definitions
“Invention” shall mean an invention that is conceived or reduced to practice in connection with any activity carried out pursuant to this Agreement. Under this definition, an Invention may be made by employees of PTC solely or jointly with a Third Party (a “PTC Invention”), by employees of the Roche Group solely or jointly with a Third Party (a “Roche Invention”), or jointly by employees of PTC and of a member of the Roche Group with or without a Third Party (a “Joint Invention”).
“Joint Know-How” shall mean Know-How that is made jointly by the Parties or their Affiliates or their Sublicensees in connection with any activity carried out pursuant to this Agreement.
“Joint Patent Rights” shall mean all Patent Rights Covering a Joint Invention.
“PTC Base Patent Rights” shall mean any and all Patent Rights in the Territory that are Controlled by PTC as of the Effective Date and either Cover a Product or relate to the discovery, manufacture, development or commercialization of a Product, said Patent Rights being exhaustively listed in Appendix 1.63 of this Agreement.
“PTC Know-How” shall mean the Know-How that PTC Controls at the Effective Date and during the Agreement Term.
“PTC Patent Rights” shall mean any and all Patent Rights that are Controlled by PTC during the Agreement Term and that either Cover a Product or relate to the discovery, manufacture, development or commercialization of a Product. The term PTC Patent Rights shall include PTC Base Patent Rights.
“Roche Background Patent Rights” shall mean any and all Patent Rights, excluding the Roche Product Patent Rights and the excluded Patent Rights identified in Appendix 1.72, that are Controlled by Roche during the Agreement Term and either Cover a Product or relate to the discovery, manufacture, development or commercialization of a Product.
“Roche Product Patent Rights” shall mean any and all Patent Rights that are Controlled by Roche during the Agreement Term and that Cover the composition of matter or the method of use of a Product.
3. Grant of Licenses
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3.4 Rights Retained by the Parties. Any rights of PTC or Roche, as the case may be, not expressly granted to the other Party pursuant to this Agreement shall be retained by such Party. Without limiting the generality of the foregoing, no right or license is granted to Roche under the PTC Patent Rights and PTC Know-How and PTC’s interest in the Joint Patent Rights and Joint Know-How to research, have researched, develop, have developed, register, have registered, use, have used, make, have made, import, have imported, export, have exported, market, have marketed, distribute, have distributed, sell and have sold any composition that is not a Compound or Product. Except in the context of a mutually agreed Research Plan, the exclusive license granted hereunder excludes any right of Roche or its Affiliates to access or use the AS Assay or to grant any such rights to the AS Assay to any other Person.
15. Intellectual Property
15.1 Ownership of Inventions. PTC shall own all PTC Inventions, Roche shall own all Roche Inventions, and PTC and Roche shall jointly own all Joint Inventions. The determination of inventorship for Inventions shall be in accordance with US inventorship Laws. PTC and Roche each shall require all of its employees and contractors to assign all inventions related to Products made by them to Roche and PTC, as the case may be. In the case of all others acting in the performance of the Research Program on behalf of such Party, such as agents or non-employees working for non-profit academic institutions, such others shall also be obligated under a written agreement or other binding obligation that meets the criteria of the preceding sentence or includes an exclusive license grant to such Party, or as such Party shall direct, unless otherwise approved by the JSC; provided, that in the case of government funded or non profit entities, such Party’s obligation shall be limited to using Commercially Reasonable Efforts to negotiate for at least an exclusive option to license such Invention, subject to any requirement of Law (including without limitation mandatory licenses and other rights granted to government entities).
15.2 German Statute on Employee’s Inventions. In accordance with the German Statute on Employees’ Inventions, each Party agrees to claim the unlimited use of any Invention Conceived, reduced to practice, developed, made or created in the performance of, or as a result of, the Research Program or the Product Development Program by its German employees or any other German person acting on its behalf. The Party which is the ultimate assignee of theGerman employee’s or other person’s Invention under this Agreement shall pay any royalty or other compensation payable to the employee or other person, and the Parties agree that the Party which is the ultimate assignee must agree to the royalty or other compensation negotiated with the employee or other person.