RANI-InCube Labs IP Agreement
To the extent that a patent, patent application or other Intellectual Property Right resulting from an InCube Invention has applicability outside the Field (herein a Multi-Field Intellectual Property Right ), the parties agree that InCube will own such Multi-Field Intellectual Property Rights and will have the responsibility for prosecuting and maintaining any patent application, patent or other Intellectual Property Right associated with the Multi-Field Intellectual Property Right (such patents and patent applications being referred to herein as Multi-field Patents), when and if issued. InCube hereby grants RANI an exclusive, perpetual, irrevocable, transferable, sublicenseable, worldwide right and license in the Field to develop, make, have made, use, sell, offer for sale, import, export and otherwise commercialize Licensed Products (herein a Multi-Field Patent License). For each patent or patent application under the Multi-Field Patent License, RANI agrees to pay all pro-rata costs with any other licensee, for the prosecution and maintenance of the Multi-Field InCube Patent.
The Multi-Field Patents and Patent applications will be licensed to RANI under the Exclusive License Agreement, which is attached hereto as Exhibit I
Notwithstanding the foregoing, RANI agrees and acknowledges that InCube is subject to preexisting obligations with respect to the development, assignment and confidentiality of intellectual property that is developed, in whole or in part, by Mir Imran or by InCube, or with the use of funds contributed by InCube. Rani agrees that its rights to any such information as provided for hereunder are in all cases subject to and limited by InCubes preexisting rights, and that in the event of any conflict between such preexisting rights and the rights of the Company set forth hereunder, the preexisting rights shall prevail.
B. Pre-Existing Intellectual Property. InCube agrees that if, in the course of performing the services provided for under Section 1.A above (the Services), InCube incorporates into any Invention developed under this Agreement any pre-existing invention, improvement, development, concept, discovery or other proprietary information owned by InCube or in which InCube has an interest, (i) InCube will inform RANI, in writing before incorporating such invention, improvement, development, concept, discovery or other proprietary information into any Invention, and (ii) to the extent that InCube has rights thereto, RANI will be offered a nonexclusive, worldwide license in the Field, to make, have made, modify, use and sell such item as part of or in connection with such Invention. In such a License, RANI agrees to pay all pro-rata costs for the prosecution and maintenance of the Pre-existing InCube Patent.
C. Further Assurances. InCube agrees to assist and to cause each InCube Employee to assist, RANI, or its designee, at RANIs expense, in every proper way to secure RANIs rights in assigned or licensed Inventions and any copyrights, patents or other intellectual property rights in any and all countries, including the disclosure to RANI of all pertinent information and data with respect to all assigned or licensed Inventions, the execution of all applications, specifications, oaths, assignments and all other instruments that RANI may deem necessary to secure RANIs intellectual property rights under this agreement. InCube also agrees that InCubes obligation to execute or cause to be executed any documents relating to assign licensed intellectual property, shall continue after the termination of this Agreement.