WILL BE USED IN
CONNECTION WITH THE PROMOTION AND SALE OF THE PRODUCT BY SCHERING; PROVIDED
HOWEVER, THAT UPON WRITTEN REQUEST BY SONUS, SCHERING SHALL PROVIDE SUCH
ASSISTANCE AS MAY BE REASONABLY NECESSARY TO ENABLE SONUS TO COMPLY WITH THE
ADMINISTRATIVE FORMALITIES NECESSARY TO MAINTAIN ANY SONUS MARKS.
28
SECTION 9.03
PATENT AND TECHNOLOGY OWNERSHIP.
EACH PARTY SHALL REMAIN THE SOLE OWNER OR LICENSEE, AS APPLICABLE, OF ALL
TECHNOLOGY, DISCOVERIES, PATENT APPLICATIONS, PATENTS, KNOW-HOW AND INVENTIONS
OWNED OR CONTROLLED BY SUCH PARTY ON THE EXECUTION DATE AND SHALL HAVE NO RIGHTS
IN OR TO TECHNOLOGY, DISCOVERIES, PATENT APPLICATIONS, PATENTS, KNOW-HOW AND
INVENTIONS OWNED BY THE OTHER PARTY EXCEPT AS SPECIFICALLY PROVIDED BY THIS
AGREEMENT.
THE ENTIRE RIGHT AND TITLE IN ALL TECHNOLOGY ARISING OUT OF WORK
PERFORMED BY THE PARTIES IN THE COURSE OF CONDUCTING ACTIVITIES PURSUANT TO THIS
AGREEMENT (I) CONCEIVED BY EMPLOYEES OR OTHERS ACTING SOLELY ON BEHALF OF SONUS
OR ITS AFFILIATES SHALL BE OWNED SOLELY BY SONUS (II) CONCEIVED BY EMPLOYEES OR
OTHERS ACTING SOLELY ON BEHALF OF SCHERING OR ITS AFFILIATES SHALL BE OWNED
SOLELY BY SCHERING, AND (III) CONCEIVED BY EMPLOYEES OR OTHERS ACTING JOINTLY ON
BEHALF OF SONUS AND SCHERING, OR THEIR RESPECTIVE AFFILIATES, SHALL BE OWNED
JOINTLY BY SONUS AND SCHERING, PROVIDED HOWEVER, THAT NEITHER PARTY MAY LICENSE
RIGHTS IN ANY TECHNOLOGY WHICH IS JOINTLY OWNED WITHOUT THE PRIOR WRITTEN
CONSENT OF THE OTHER PARTY, EXCEPT THAT SCHERING MAY LICENSE SUCH RIGHTS AS PART
OF A PERMITTED SUBLICENSE PURSUANT TO SECTION 2.02 OF THIS AGREEMENT.
SECTION 9.04
COOPERATION OF THE PARTIES.
EACH
PARTY AGREES TO COOPERATE FULLY IN THE PREPARATION, FILING, AND PROSECUTION OF
ANY PATENTS UNDER THIS AGREEMENT.
SUCH COOPERATION INCLUDES, BUT IS NOT LIMITED
TO:
(A)
EXECUTING ALL PAPERS AND INSTRUMENTS, OR
REQUIRING ITS EMPLOYEES OR AGENTS, TO EXECUTE SUCH PAPERS AND INSTRUMENTS, SO AS
TO EFFECTUATE THE OWNERSHIP OF PATENTS SET FORTH IN SECTION 9.03 ABOVE AND TO
ENABLE THE OTHER PARTY TO APPLY FOR AND TO PROSECUTE PATENT APPLICATIONS IN ANY
COUNTRY; AND
(B)
PROMPTLY INFORMING THE OTHER PARTY OF ANY
MATTERS COMING TO SUCH PARTY'S ATTENTION THAT MAY AFFECT THE PREPARATION,
FILING, OR PROSECUTION OF ANY SUCH PATENT APPLICATIONS.
(C)
PROMPTLY, AND REASONABLY IN ADVANCE OF THE
INTENDED DATE FOR SUBMISSION OF SUCH APPLICATION TO A GOVERNMENTAL PATENT
AUTHORITY, DISCLOSING TO THE OTHER PARTY ANY PATENT APPLICATION DISCLOSING
INVENTIONS MADE JOINTLY BY THE PARTIES.
(D)
COOPERATING WITH EACH OTHER IN REGARD TO
MAXIMIZING THE DURATION OF AND EXTENDING THE TERM OF PATENT COVERAGE, INCLUDING,
WITHOUT LIMITATION, ASSEMBLING AND PROSECUTING ONE OR MORE APPLICATIONS FOR
PATENT TERM EXTENSION IN THE US AND ANY OTHER COUNTRIES WHERE SUCH EXTENSION IS
AVAILABLE.
Within three (3) months of the Execution Date, the Parties agree to establish a
patent committee ("Patent Committee") comprised of intellectual property experts
from Sonus and Schering for the purpose of providing a forum for the Parties to
consult with each other on patent strategy and to agree on procedures for the
filing and maintenance of Patents