TO APPLY FOR AND OBTAIN SUCH RIGHTS AND IN ORDER TO ASSIGN AND CONVEY TO
SUPERGEN, ITS SUCCESSORS, ASSIGNS AND NOMINEES THE SOLE AND EXCLUSIVE RIGHT,
TITLE AND INTEREST IN AND TO SUCH SUPERGEN MATERIALS, AND ANY INTELLECTUAL
PROPERTY RIGHTS THEREIN.
*** WILL EXECUTE OR CAUSE TO BE EXECUTED, WHEN IT IS
IN ***'S POWER TO DO SO, ANY SUCH INSTRUMENT OR PAPERS NECESSARY TO CARRY OUT
THE PROVISIONS OF THIS SECTION 5.1.
THE PROVISIONS OF THIS SECTION 5.1 WILL
CONTINUE AFTER THE TERMINATION OF THIS AGREEMENT.
5.2
REPORTING/TRANSFER OF RESULTS.
DURING THE
DEVELOPMENT PROGRAM, *** WILL REGULARLY PROVIDE SUPERGEN, AT ***'S EXPENSE, WITH
WRITTEN REPORTS OF DEVELOPMENT RESULTS, WHICH HAVE BEEN DEVELOPED, COMPILED OR
LEARNED DURING THE COURSE OF THE DEVELOPMENT PROGRAM AS OUTLINED IN EXHIBIT B.
FURTHER, AS PROVIDED IN EXHIBIT B, *** WILL ALSO RESPOND TO SUPERGEN'S
REASONABLE INQUIRIES, AT ***'S EXPENSE, REGARDING THE STATUS OF THE DEVELOPMENT
PROGRAM ON AN ONGOING BASIS, AND *** WILL ENDEAVOR TO KEEP SUPERGEN REASONABLY
INFORMED OF INTERIM RESULTS ON AN INFORMAL BASIS, INCLUDING, IF REQUESTED,
PERIODIC MEETINGS AT ***'S FACILITY TO DISCUSS DEVELOPMENT PROGRAM RESULTS AND
PROGRESS.
IN ADDITION AT SUPERGEN'S OPTION AND REQUEST, *** WILL PACKAGE AND
SHIP TO SUPERGEN, PURSUANT TO SUPERGEN'S INSTRUCTIONS AND AT SUPERGEN'S EXPENSE
WITH SUPERGEN BEARING ALL PACKAGING, SHIPPING AND INSURANCE CHARGES (TITLE AND
RISK OF LOSS PASSING TO SUPERGEN UPON DELIVERY TO THE COMMON CARRIER) BATCHES OF
PRODUCT PREPARED DURING THE DEVELOPMENT PROGRAM AS OUTLINED IN THE EXHIBIT B AND
IN SECTION 2.1 ABOVE.
SUCH DELIVERIES WILL BE MADE FOB ***'S FACILITY IN ***.
*** WILL RETAIN REPRESENTATIVE SAMPLES FROM EACH BATCH OF PRODUCT FOR RECORD
KEEPING, STABILITY TESTING AND OTHER REGULATORY PURPOSES IN ACCORDANCE WITH THE
SPECIFICATIONS AND REGULATORY REQUIREMENTS.
5.3
*** BACKGROUND PROPERTY.
SUPERGEN
ACKNOWLEDGES THAT *** POSSESSES CERTAIN INVENTIONS, PROCESSES, KNOW-HOW, TRADE
SECRETS, IMPROVEMENTS, OTHER INTELLECTUAL PROPERTIES AND OTHER ASSETS, INCLUDING
PROCEDURES AND TECHNIQUES, COMPUTER TECHNICAL EXPERTISE, SOFTWARE, AND CERTAIN
TECHNICAL EXPERTISE AND CONCEPTUAL EXPERTISE IN THE AREA OF DRUG SUBSTANCE
PROCESSING AND MANUFACTURING, AS WELL AS IMPROVEMENTS TO THE FOREGOING, THAT
HAVE BEEN INDEPENDENTLY DEVELOPED BY *** PRIOR TO THE EFFECTIVE DATE WITHOUT THE
BENEFIT OF ANY PRODUCT INFORMATION, SUPERGEN MATERIALS OR OTHER INFORMATION
PROVIDED BY SUPERGEN (COLLECTIVELY, THE "*** BACKGROUND PROPERTY").
ALL ***
BACKGROUND PROPERTY (AND IMPROVEMENTS TO SUCH *** BACKGROUND PROPERTY) THAT IS
USED, IMPROVED,
6
MODIFIED, OR DEVELOPED BY *** UNDER OR DURING THE TERM WILL BE AND REMAIN THE
SOLE AND EXCLUSIVE PROPERTY OF ***.
*** HEREBY GRANTS SUPERGEN A NON-EXCLUSIVE,
PERPETUAL, ***, WORLDWIDE LICENSE, WITH THE RIGHT TO GRANT AND AUTHORIZE
SUBLICENSES, UNDER THE *** BACKGROUND PROPERTY, SOLELY AS NECESSARY OR USEFUL TO
DEVELOP, MAKE, HAVE MADE, USE, SELL, HAVE SOLD, IMPORT AND EXPORT THE PRODUCT.
5.4
OWNERSHIP AND RIGHTS TO INVENTIONS AND
TECHNOLOGY.
ALL INVENTIONS, TECHNOLOGY AND INFORMATION (OTHER THAN THOSE
DESCRIBED IN SECTIONS 5.1 AND 5.3 ABOVE), WHETHER OR NOT PATENTABLE, THAT ARE
CONCEIVED, REDUCED TO PRACTICE OR CREATED SOLELY BY *** AND/OR ITS AGENTS DURING
THE PERFORMANCE OF ***'S OBLIGATIONS