Master Alliance Provisions Guide (MAPGuide)

U.S. Department of Defense – Inovio, COVID-19 Vaccine Delivery Device, Other Transaction Prototype Agreement

  • Liability | Representations & Warranties

ARTICLE 11. Intellectual Property Rights


B. Awardee’s Background IP. Awardee warrants that it has filed patent application(s) or is the assignee of issued patent(s) directed to a device previously provided to the Government and hereby incorporated as Attachment 1 which contain claims that are related to research contemplated under this Agreement. No license(s) to any patent applications or issued patents shall be granted under this Agreement to the Government, and the application(s) and any continuing applications (except for continuing applications pursuant to this agreement) identified to the Government are specifically excluded from the definitions of “OTA Invention” contained in this Agreement: Background


F. Ownership. Ownership of any invention, regardless of whether it is not patentable, or is patentable under U.S. patent law that is conceived or first reduced to practice under this Agreement (“OTA Invention”) will follow inventorship in accordance with U.S. patent law. The Bayh-Dole Act, 35 U.S.C. §§ 200-212 does not apply to this Agreement and, as such, title to inventions will belong to the inventor or via assignment of ownership to the inventor-organization. The Parties represent and warrant that each inventor is obligated to assign and will assign his or her rights in any such inventions to his or her employing organization. If either an Awardee employee or a Government employee makes a sole OTA Invention, the entire rights to that OTA Invention will be respectively assigned to the Awardee or the Government. If an Awardee employee and a Government employee jointly make an OTA invention, it will be owned jointly by the Awardee and the Government. Ownership of inventions made in whole or in part with subawardee or collaborator employees, including employees of other components of the Government, will be determined solely pursuant to an agreement between the Awardee and the applicable subawardee or collaborator.