AND SHALL CAUSE ITS AFFILIATES AND
SUBLICENSEES TO TAKE, APPROPRIATE STEPS TO ENSURE THAT ITS, OR THEIR OFFICERS,
DIRECTORS, EMPLOYEES, CONSULTANTS AND ALL OTHER PERSONNEL ARE OBLIGATED TO
ASSIGN TO SEPRACOR ALL RIGHT, TITLE AND INTEREST EACH MAY HAVE IN ANY SUCH
NON-SEVERABLE IMPROVEMENT AND WILL COOPERATE TO EFFECT THE FOREGOING. IN
CONSIDERATION OF THIS ASSIGNMENT, SEPRACOR AGREES THAT IN THE EVENT THAT THE
LAST VALID CLAIM WITHIN A PATENT CONTROLLED BY SEPRACOR THAT WOULD BE INFRINGED
BY THE LICENSED ACTIVITIES IN SUCH COUNTRY IN THE ABSENCE OF THE LICENSES
GRANTED UNDER THIS AGREEMENT COVERS A NON-SEVERABLE IMPROVEMENT, THEN FOR THE
PURPOSES OF SECTION 7.3(C)(I), IT SHALL BE DEEMED THAT SUCH VALID CLAIM HAS
EXPIRED.
(D)
GSK HEREBY GRANTS SEPRACOR A WORLDWIDE, NON-EXCLUSIVE, IRREVOCABLE
AND FULLY PAID UP LICENSE, WITH RIGHT TO SUB-LICENSE, TO USE IN RELATION TO
SEPRACOR'S, ITS AFFILIATE'S AND SUBLICENSEES' COMMERCIALIZATION OF THE PRODUCT
IN THE SEPRACOR TERRITORY ANY SEVERABLE IMPROVEMENTS OR DEVELOPMENT DATA WHICH
ARE MADE, CONCEIVED, REDUCED TO PRACTICE OR GENERATED BY GSK, ITS AFFILIATES AND
SUBLICENSEES, OR ANY OF ITS OR THEIR OFFICERS, DIRECTORS, EMPLOYEES, CONSULTANTS
OR OTHER PERSONNEL IN THE PERFORMANCE OF THE DEVELOPMENT STUDIES.
(E)
JOINT INVENTIONS. SUBJECT TO THE RIGHTS GRANTED UNDER THIS
AGREEMENT, EACH PARTY CAN USE, AND GRANT NON-EXCLUSIVE LICENSES TO USE, AN
INVENTION OR DISCOVERY JOINTLY OWNED BY GSK AND SEPRACOR PURSUANT TO SECTION
12.1(B) WITHOUT THE OTHER PARTY'S CONSENT AND HAS NO DUTY TO ACCOUNT TO THE
OTHER PARTY FOR SUCH USE OR LICENSE, AND EACH PARTY HEREBY WAIVES ANY RIGHT IT
MAY HAVE UNDER THE LAWS OF ANY COUNTRY TO REQUIRE ANY SUCH CONSENT OR
ACCOUNTING.
CONFIDENTIAL
(F)
INVENTORSHIP. FOR PURPOSES OF DETERMINING QUESTIONS OF
INVENTORSHIP FOR PURPOSES OF SECTION 12.1(B) THE PARTIES SHALL APPLY THE LAW OF
THE COUNTRY IN WHICH THE PATENT APPLICATIONS DIRECTED TO THE RELEVANT INVENTIONS
ARE FILED.
12.2.
PROSECUTION AND MAINTENANCE OF SEPRACOR PATENTS.
(A)
PROSECUTION. SEPRACOR SHALL, [**], BE RESPONSIBLE FOR THE FILING,
PROSECUTION AND MAINTENANCE OF ALL SEPRACOR PATENTS IN THE GSK TERRITORY, [**].
GSK SHALL HAVE THE RIGHT TO REVIEW NEW OR PENDING PATENT APPLICATIONS IN THE GSK
TERRITORY AND MAKE RECOMMENDATIONS TO SEPRACOR CONCERNING SUCH PATENT
APPLICATIONS. SEPRACOR WILL CONSIDER IN GOOD FAITH ALL REASONABLE SUGGESTIONS OF
GSK WITH RESPECT THERETO, AND AGREES TO KEEP GSK GENERALLY INFORMED OF THE
COURSE OF PATENT PROSECUTION OR OTHER PROCEEDINGS WITH RESPECT TO THE SEPRACOR
PATENTS WITHIN THE GSK TERRITORY, INCLUDING WITHOUT LIMITATION PROVIDING
CONFIRMATION THAT ALL RENEWAL AND MAINTENANCE FEES HAVE BEEN PAID IN A TIMELY
FASHION. GSK SHALL PROVIDE SUCH PATENT CONSULTATION TO SEPRACOR AT NO COST TO
SEPRACOR BUT SHALL HAVE NO OBLIGATION TO PROVIDE SUCH. GSK SHALL HOLD ALL
INFORMATION DISCLOSED TO IT UNDER THIS SECTION AS CONFIDENTIAL INFORMATION. IF
SEPRACOR ELECTS NOT TO UNDERTAKE THE FILING, PROSECUTION AND/OR MAINTENANCE OF
ANY SEPRACOR PATENTS IN THE GSK TERRITORY (OR, AFTER COMMENCEMENT OF SUCH
FILING, PROSECUTION AND/OR MAINTENANCE, DESIRES TO CEASE THE PROSECUTION OR THE
MAINTENANCE OF ANY SUCH SEPRACOR PATENTS IN THE GSK TERRITORY), THEN