“Study Data“ (Article 12.A) – All data generated in connection with the performance of this Agreement, or that arises out of the use of any materials or enabling technology provided or used by the Awardee in the performance of this Agreement, other Awardee materials or Awardee confidential information, whether conducted by the Government or the Awardee.
ARTICLE 11. Intellectual Property Rights
A. Background IP and Materials. The Awardee and the Government each retain any intellectual property (IP) rights to their own materials, data, technology, information, documents, or know-how—or potential rights, such as issued patents, patent applications, invention disclosures, or other written documentation—that exist prior to execution of this Agreement or are developed outside the scope of this Agreement (“Background IP”). Additionally, no party to the Agreement will enter into an agreement with any contract manufacturer or other third party whereby the third party will obtain rights in OTA Inventions or Study Data, as those terms are defined in this Agreement, absent the mutual consent of the parties to the awarded contract, however any party having an existing agreement with Inovio shall not be subject to this requirement.
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.
H. Licenses. Upon the Awardee’s request, the Government agrees to enter into good faith negotiations with the Awardee regarding the Awardee’s receipt of a nonexclusive commercialization license covering the Government’s interest in any OTA Invention made in whole by a Government employee. Any OTA Invention made solely by an Awardee employee is subject to a nonexclusive, nontransferable, irrevocable, paid-up license for the Government to practice and have practiced the OTA Invention with “Unlimited rights,” as this term is defined in DFARS 252.227-7013a)(16), as if this regulation were applicable to inventions, rather than technical data.
ARTICLE 12. Data Rights
A. All data generated in connection with the performance of this Agreement, or that arises out of the use of any materials or enabling technology provided or used by the Awardee in the performance of this Agreement, other Awardee materials or Awardee confidential information, whether conducted by the Government or the Awardee (collectively, the “Study Data“), shall be owned by the Awardee. The Government shall have the right to use, modify, reproduce, release, perform, display, or disclose data first produced in the performance of this Agreement within the Government and otherwise for “Unlimited rights,” as this term is defined in DFARS 252.227-7013(a)(16). The Government may, under a separate agreement or by modification to this agreement, obtain any rights to use or disclose the Awardee’s material or data to the extent that such material or data was produced outside the scope of this Agreement. Notwithstanding the above, as a result of this Agreement, the Government shall obtain “Unlimited rights,” as this term is defined in DFARS 252.227-7013(a)(16) specific to any data generated under this agreement.
B. The Awardee agrees to retain and maintain in good condition until seven (7) years after completion or termination of this Agreement, all data generated under this Agreement. In the event of exercise of the Government’s rights as potentially granted under paragraph 2.C, the Awardee agrees to deliver at no additional cost to the Government, all data, in Awardee’s possession and developed under this Agreement, necessary to develop the Prototype within sixty (60) calendar days from the date of the written request.
C. Marking of Data: The Awardee will mark any data delivered under this Agreement with the following legend: “Use, duplication, or disclosure is subject to the restrictions as stated in Agreement No. [***] between the Government and the Awardee.” Any rights that the Awardee or the Government may have in data delivered under this Agreement, whether arising under this Agreement or otherwise, will not be affected by Awardee’s failure to mark data pursuant to this Article.
D. All Technical Data and Software (each term as defined under DFARS 252.227- 7013) which shall be delivered under this Agreement with less than unlimited rights shall be identified in reasonable specificity and particular rights granted (Government Purpose, Limited or Restricted (all as defined in DFARS 252.227-7013)) prior to entering into the Agreement. All other Technical Data and Software developed under funding of this agreement shall be delivered with unlimited rights as provided for within this Article.