OBTAIN THE CONSENT OF
THE OTHER, WITH RESPECT TO THE EXPLOITATION (DIRECTLY OR THROUGH LICENSEES OR
THIRD PARTIES) OF ANY JOINT COLLABORATION TECHNOLOGY, AND EACH PARTY HEREBY
WAIVES ANY RIGHT IT MAY HAVE UNDER THE LAWS OF ANY JURISDICTION TO REQUIRE SUCH
AN ACCOUNTING OR CONSENT.
8.3 [ * ].
(A)
[ * ] PATENTABILITY.
SOLELY TO THE EXTENT [ * ], AS REASONABLY DETERMINED
BY GENENTECH AND ARRAY, INVENTIONS WITHIN GENENTECH COLLABORATION TECHNOLOGY OR
JOINT COLLABORATION TECHNOLOGY SHALL BE SUBJECT TO AN [ * ].
PROVIDED FURTHER,
WHETHER OR NOT GENENTECH HAS REQUESTED [ * ], ARRAY SHALL PROMPTLY [ * ]
(I) [ * ], UPON TERMINATION OF THE AGREEMENT; (II) [ * ], UPON ABANDONMENT OF
SUCH COLLABORATION TARGET PURSUANT TO SECTION 2.6(B); AND (III) [ * ], UPON SUCH
EXCLUSION.
(B)
[ * ] PATENT TERM EXTENSIONS.
WITH RESPECT TO ANY COMPOUND FOR WHICH
GENENTECH HAS FILED AN IND, AT THE TIME OF SUCH FILING, OR AT ANY TIME
THEREAFTER, GENENTECH MAY REQUEST THAT ARRAY [ * ], TO GENENTECH SUCH [ * ], SO
AS TO PROVIDE GENENTECH [ * ], AND ARRAY SHALL UNDERTAKE [ * ] THAT ARE
REASONABLY NECESSARY TO FACILITATE GENENTECH PROCURING A PATENT TERM EXTENSION
WITH RESPECT TO SUCH COMPOUND.
20
8.4 Inventorship.
The determination of inventorship for Collaboration
Technology shall be made in accordance with applicable laws relating to
inventorship set forth in the patent laws of the United States.
All such
determinations shall be documented to ensure that any divisional or continuation
patent applications reflect appropriate inventorship and that inventions and
patent rights are assigned to the appropriate Party.
If either Party identifies
Joint Collaboration Technology, the Parties' patent counsel shall determine
inventorship and, in the event of a disagreement, the Parties shall refer such
determination to mutually acceptable outside counsel.
8.5 Assignment; Cooperation.
Each Party shall require all of its employees and
any Third Parties working pursuant to this Agreement on its behalf, to assign to
such Party any Collaboration Technology discovered, conceived or reduced to
practice by such employee or Third Party, and to cooperate with such Party in
connection with obtaining patent protection therefor.
The Parties agree to
reasonably cooperate with each other to effectuate ownership of Collaboration
Technology as set forth herein, including, but not limited to, by executing and
recording documents.
8.6 Patent Prosecution.
(A)
DEFINITIONS.
THE FOLLOWING DEFINITIONS SHALL BE USED ONLY FOR THE PURPOSES
OF THIS SECTION 8.6 (OR AS OTHERWISE EXPRESSLY REFERENCED IN THIS AGREEMENT):
(I)
"PROSECUTING PARTY" IS DEFINED IN SECTION 8.6(D)(II).
(II)
"PROSECUTION AND MAINTENANCE" OR "PROSECUTE AND MAINTAIN," WITH REGARD TO
A PARTICULAR PATENT, MEANS THE PREPARATION, FILING, PROSECUTION AND MAINTENANCE
OF SUCH PATENT, AS WELL AS RE-EXAMINATIONS, REISSUES, REQUESTS FOR PATENT TERM
EXTENSIONS AND THE LIKE WITH RESPECT TO SUCH PATENT, TOGETHER WITH THE CONDUCT
OF INTERFERENCES, THE DEFENSE OF OPPOSITIONS AND OTHER SIMILAR PROCEEDINGS WITH
RESPECT TO SUCH PATENT.
(B)
DISCLOSURE OF TECHNOLOGY.
DURING THE RESEARCH TERM, EACH PARTY SHALL
PROMPTLY DISCLOSE TO THE