WHO, TO THE KNOWLEDGE OF LICENSOR OR ONE OF ITS
AFFILIATES, HAS IN THE PAST EXPORTED, OR PERMITTED THE EXPORTATION OF, THE
PRODUCT FROM OUTSIDE OF THE TERRITORY FOR SALE WITHIN THE TERRITORY (ANY SUCH
SALE, AN "UNAUTHORIZED SALE").
LICENSOR SHALL PROMPTLY USE COMMERCIALLY
REASONABLE EFFORTS TO TAKE ANY ACTION REASONABLY AVAILABLE TO LICENSOR OR ONE OF
ITS AFFILIATES, AND SHALL WITHIN SIXTY (60) DAYS AFTER ANY UNAUTHORIZED SALE HAS
COME TO THE ATTENTION OF LICENSOR OR ONE OF ITS AFFILIATES, INITIATE ALL
COMMERCIALLY REASONABLE STEPS WHICH ARE LAWFULLY AVAILABLE TO LICENSOR IN THE
TERRITORY, TO PREVENT SUCH UNAUTHORIZED SALES.
7.4
CANCER PRODUCT DEVELOPMENT AND PROMOTION
ARRANGEMENT.
LICENSEE ACKNOWLEDGES THAT THIS AGREEMENT DOES NOT GRANT LICENSEE
ANY RIGHT TO IMPORT, DEVELOP, HAVE DEVELOPED, MAKE, HAVE MADE, USE, OFFER FOR
SALE AND SELL PRODUCT FOR THE CANCER INDICATIONS.
DURING THE [*
*
*]-MONTH
PERIOD BEGINNING ON THE EFFECTIVE DATE, LICENSEE AND LICENSOR AGREE TO NEGOTIATE
IN GOOD FAITH AN ARRANGEMENT WHEREBY LICENSEE WOULD DEVELOP ON LICENSOR'S BEHALF
A FORMULATION OF GABAPENTIN GR FOR THE CANCER INDICATIONS AND PROVIDE LICENSOR
WITH A SUPPLY OF SUCH GABAPENTIN GR FORMULATION FOR THE CLINICAL DEVELOPMENT OF
A CANCER PRODUCT ("PROMOTION AGREEMENT").
ANY SUCH PROMOTION AGREEMENT SHALL BE
SUBJECT TO THE EXECUTION AND DELIVERY OF A DEFINITIVE AGREEMENT PROVIDING FOR
SUCH AN ARRANGEMENT THAT IS ACCEPTABLE TO EACH PARTY IN ITS SOLE DISCRETION.
8.
OWNERSHIP AND INTELLECTUAL PROPERTY
8.1
INTELLECTUAL PROPERTY OWNERSHIP.
SUBJECT TO
THE LICENSE GRANTED HEREIN, ALL RIGHTS, TITLE AND INTEREST IN INTELLECTUAL
PROPERTY HELD BY A PARTY TO THIS
* * * Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
19
AGREEMENT PRIOR TO THE EFFECTIVE DATE SHALL CONTINUE TO BE OWNED BY SUCH PARTY.
ALL INTELLECTUAL PROPERTY (I) RELATING TO PRODUCT DEVELOPED OR FUNDED BY
LICENSEE AND ITS AFFILIATES OR DEVELOPED BY LICENSOR PURSUANT TO ITS CONSULTING
SERVICES UNDER SECTION 5.6, SHALL BE AND REMAIN THE PROPERTY OF LICENSEE.
ALL
INTELLECTUAL PROPERTY RELATING TO DRUG DELIVERY OR GASTRIC RETENTION IN
CONNECTION WITH, OR COMPOSITIONS OR USES OF, LICENSEE'S GABAPENTIN GR IN
NON-NOCICEPTIVE PAIN SHALL BE OWNED BY LICENSEE.
8.2
PATENT PROSECUTION.
AS BETWEEN THE PARTIES,
LICENSOR SHALL BE RESPONSIBLE FOR ENSURING THE PROSECUTION AND MAINTENANCE OF
PATENTS WITHIN THE LICENSOR PATENT RIGHTS.
EACH PARTY SHALL BE RESPONSIBLE FOR
THE FULL COSTS OF AND RESPONSIBILITY FOR PREPARING, FILING AND PROSECUTING, IN
ITS SOLE DISCRETION, PATENT APPLICATIONS FOR INVENTIONS OWNED BY IT AS PROVIDED
HEREIN.
8.3
TRADEMARKS. LICENSOR WILL HAVE NO INTEREST
IN ANY TRADEMARKS USED IN COMMERCIALIZING THE PRODUCT IN THE TERRITORY.
8.4
COOPERATION.
EACH PARTY WILL COOPERATE, AND
WILL CAUSE ITS EMPLOYEES, CONSULTANTS AND SUBCONTRACTORS TO COOPERATE, WITH ALL
REASONABLE REQUESTS OF THE OTHER PARTY FOR ASSISTANCE IN PREPARATION AND
PROSECUTION AND MAINTENANCE OF ANY APPLICATIONS FOR PATENT AND ANY PATENT
ISSUING THEREFROM.
EACH PARTY WILL SIGN DOCUMENTS TO VEST OR MAINTAIN TITLE TO
PATENTS IN THE OWNER DETERMINED IN ACCORDANCE WITH THIS ARTICLE 8.
8.5
LICENSED PATENTS.