Property therein, that is Developed by either
Party, whether alone or jointly with the other Party, in performance of the
developmentactivities described in Section 3 of this
13
Agreement, in the field of power stapling and cutting mechanisms, including
their associated drive or control components (the "New PMII IP").
8.5.
Ownership of New ISRG IP.
ISRG shall own all
Technology, and all Intellectual Property therein, that is Developed by either
Party, whether alone or jointly with the other Party, in performance of the
development activities described in Section 3 of this Agreement, outside the
field of power stapling and cutting mechanisms, including their associated drive
or control components (the "New ISRG IP").
8.6.
Assignment of Intellectual Property.
(A)
EACH PARTY REPRESENTS AND COVENANTS THAT
ALL ITS EMPLOYEES, CONSULTANTS, AND AGENTS, AND ALL THIRD PARTIES ACTING ON
BEHALF OF SUCH PARTY IN PERFORMING ITS OBLIGATIONS UNDER THIS AGREEMENT, SHALL
BE OBLIGATED UNDER A BINDING WRITTEN AGREEMENT TO ASSIGN TO SUCH PARTY ALL
TECHNOLOGY AND INTELLECTUAL PROPERTY DEVELOPED BY SUCH EMPLOYEES, CONSULTANTS,
AGENTS, AND THIRD PARTIES IN CONNECTION WITH THIS AGREEMENT.
(B)
SUBJECT TO THE LICENSES AND OTHER RIGHTS
SPECIFICALLY PROVIDED IN THIS AGREEMENT, TO THE EXTENT EITHER PARTY OBTAINS ANY
TITLE OR SIMILAR INTEREST IN ANY TECHNOLOGY, OR ANY INTELLECTUAL PROPERTY
THEREIN, THAT IS TO BE OWNED BY THE OTHER PARTY IN ACCORDANCE WITH SECTION 8 OF
THIS AGREEMENT, SUCH FIRST PARTY HEREBY ASSIGNS AND, TO THE EXTENT SUCH
ASSIGNMENT CANNOT BE MADE AT PRESENT, AGREES PROMPTLY TO ASSIGN, TO SUCH SECOND
PARTY ALL OF THE FIRST PARTY'S TITLE AND OTHER INTEREST IN AND TO SUCH
TECHNOLOGY AND INTELLECTUAL PROPERTY THROUGHOUT THE WORLD.
THE FIRST PARTY
SHALL EXECUTE AND PROCURE SUCH DOCUMENTS, INCLUDING SHORT-FORM ASSIGNMENTS AND
ASSIGNMENTS OF PATENT APPLICATIONS AND PATENTS, AND TAKE SUCH OTHER ACTIONS AS
MAY BE REASONABLY REQUESTED FROM TIME TO TIME BY THE SECOND PARTY TO OBTAIN FOR
ITS OWN BENEFIT APPROPRIATE PROTECTIONS FOR INTELLECTUAL PROPERTY IN ANY AND ALL
COUNTRIES WITH RESPECT TO SUCH TECHNOLOGY, OR OTHERWISE TO TRANSFER OR CONFIRM
THE TRANSFER OF SUCH TECHNOLOGY AND THE RELATED INTELLECTUAL PROPERTY FOR THE
BENEFIT OF THE SECOND PARTY.
9.
Prosecution of Patent Rights.
9.1.
Prosecution and Maintenance of Patent Rights.
For countries or regions that grant Patent Rights ("Designated Jurisdictions"),
PMII shall use Commercially Reasonable Efforts to prepare, file, prosecute,
obtain, and maintain:
(A)
ALL LICENSED PATENT RIGHTS EXISTING AS OF
THE AGREEMENT DATE; AND
(B)
ALL LICENSED PATENT RIGHTS THAT COME INTO
EXISTENCE AFTER THE AGREEMENT DATE IN ANY DESIGNATED JURISDICTION SELECTED AT
PMII'S DISCRETION.
(C)
WITH REFERENCE TO SECTIONS 9.1(A) AND (B),
PMII SHALL OTHERWISE TAKE ALL PATENT PROSECUTION ACTIONS AS IT SHALL DEEM TO BE
COMMERCIALLY REASONABLE, IN ITS DISCRETION, IN ORDER TO PROTECT AND ENHANCE THE
VALUE OF SUCH LICENSED PATENT RIGHTS, AND SHALL PAY ALL PATENT COSTS INCURRED BY
PMII IN CONNECTION WITH THE FOREGOING ACTIVITIES.
9.2.
Cooperation with Respect to Licensed Patent
Rights.
PMII shall regularly provide ISRG with copies of all patent
applications that, upon filing, would