BEST INTERESTS OF
THE PARTIES, THEN THE STEERING COMMITTEE SHALL SELECT SUCH ENTITY AND ENSURE
THAT A DULY AUTHORIZED OFFICER OF SUCH ENTITY AGREES IN WRITING THAT SUCH ENTITY
SHALL (A) GRANT BIOMARIN/GENZYME LLC A WORLDWIDE, EXCLUSIVE, FULLY-PAID,
ROYALTY-FREE, IRREVOCABLE RIGHT AND LICENSE (WITH THE RIGHT TO GRANT AND
AUTHORIZE
[**] = Portions of this exhibit have been omitted pursuant to a confidential
treatment request.
An unredacted version of this exhibit has been filed
separately with the Commission.
24
SUBLICENSES) TO USE SUCH PRODUCT MARKS AND (B) COMPLY WITH THE PROVISIONS OF
ARTICLE 12 OF THE MANUFACTURING, MARKETING AND SALES AGREEMENT WITH RESPECT TO
THE OWNERSHIP AND/OR DISPOSITION OF SUCH PRODUCT MARKS IN THE EVENT THIS
AGREEMENT IS TERMINATED AND PROVIDE THE LEVEL OF COOPERATION DESCRIBED IN
SECTION 14.1 HEREOF IN CONNECTION THEREWITH.
EACH PARTY HEREBY ACKNOWLEDGES
AGREES THAT AT NO TIME DURING OF THIS AGREEMENT TO CHALLENGE OR ASSIST OTHERS TO
CHALLENGE THE PRODUCT MARKS OR THE REGISTRATION THEREOF OR ATTEMPT TO REGISTER
ANY TRADEMARKS, MARKS OR TRADE NAMES CONFUSINGLY SIMILAR TO SUCH PRODUCT MARKS.
9.1.3
COOPERATION OF EMPLOYEES.
EACH OF BIOMARIN AND
GENZYME REPRESENTS AND AGREES THAT ALL EMPLOYEES OR OTHERS ACTING ON ITS BEHALF
IN PERFORMING ITS OBLIGATIONS UNDER THIS AGREEMENT SHALL BE OBLIGATED UNDER A
BINDING WRITTEN AGREEMENT TO ASSIGN TO SUCH PARTY, OR AS SUCH PARTY SHALL
DIRECT, ALL INVENTIONS MADE OR CONCEIVED BY SUCH EMPLOYEE OR OTHER PERSON.
IN
THE CASE OF NON-EMPLOYEES WORKING FOR OTHER COMPANIES OR INSTITUTIONS ON BEHALF
OF BIOMARIN OR GENZYME, BIOMARIN OR GENZYME, AS APPLICABLE, SHALL HAVE THE RIGHT
TO OBTAIN LICENSES FOR ALL INVENTIONS MADE BY SUCH NON-EMPLOYEES ON BEHALF OF
BIOMARIN OR GENZYME, AS APPLICABLE, IN ACCORDANCE WITH THE POLICIES OF SAID
COMPANY OR INSTITUTION.
BIOMARIN AND GENZYME AGREE TO UNDERTAKE TO ENFORCE SUCH
AGREEMENTS (INCLUDING, WHERE APPROPRIATE, BY LEGAL ACTION) CONSIDERING, AMONG
OTHER THINGS, THE COMMERCIAL VALUE OF SUCH INVENTIONS.
9.2 FILING, PROSECUTION AND MAINTENANCE OF PATENT RIGHTS.
BIOMARIN SHALL BE
RESPONSIBLE, AT BIOMARIN'S EXPENSE, FOR THE FILING, PROSECUTION AND MAINTENANCE
OF PATENT RIGHTS WITHIN THE BIOMARIN PATENT RIGHTS AND BIOMARIN/GENZYME PATENT
RIGHTS, AND GENZYME SHALL BE RESPONSIBLE, AT GENZYME'S EXPENSE, FOR THE FILING,
PROSECUTION AND MAINTENANCE OF PATENT RIGHTS WITHIN THE GENZYME PATENT RIGHTS.
FOR SO LONG AS ANY OF THE LICENSE GRANTS SET FORTH IN ARTICLE 3 HEREOF REMAIN IN
EFFECT AND UPON REQUEST OF THE OTHER PARTY, EACH OF BIOMARIN AND GENZYME AGREES
TO FILE AND PROSECUTE PATENT APPLICATIONS AND MAINTAIN THE PATENT RIGHTS FOR
WHICH IT IS RESPONSIBLE IN ALL COUNTRIES IN THE TERRITORY SELECTED BY THE
STEERING COMMITTEE.
EACH OF BIOMARIN AND GENZYME SHALL CONSULT WITH AND KEEP
THE OTHER PARTY FULLY INFORMED OF IMPORTANT ISSUES RELATING TO THE PREPARATION
AND FILING (IF TIME PERMITS), PROSECUTION AND MAINTENANCE OF SUCH PATENT
APPLICATIONS AND PATENTS, AND SHALL FURNISH TO THE OTHER PARTY COPIES OF
DOCUMENTS RELEVANT TO SUCH PREPARATION, FILING, PROSECUTION OR MAINTENANCE IN
SUFFICIENT TIME PRIOR TO FILING SUCH DOCUMENT OR MAKING ANY PAYMENT DUE
THEREUNDER TO ALLOW FOR REVIEW