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The ostensible purpose in organizing IRC was for IRC to
enter into a licensing agreement with Newport for exploitation of
the NPT-15000 series compound in which Newport held a one-half
interest. IRC and Newport entered into such an agreement in 1979
for the compound identified as NPT-15392, which was within the
NPT-15000 series. However, the licensing agreement IRC entered
into was only with Newport. Sloan-Kettering was not a party to
the agreement and did not sign the agreement, and there is no
evidence that Sloan-Kettering ever acquiesced in the agreement.
Newport and IRC were cognizant of Sloan-Kettering's reservation
of patent rights, and, accordingly, the licensing agreement
between IRC and Newport was structured with the intent that
exploitation of the subject compound by IRC or its licensees
would not violate Sloan-Kettering's rights. With that in mind,
the research agreement between IRC and Newport contained the
following provisions:
2. Ownership of Project Results.
Any and all products, processes, compounds,
inventions, ideas, patents, patent rights, technical
information, data and other proprietary know-how
resulting or deriving from the Project, including all
improvements thereto, and any other rights to
commercially exploit the Project and the products and
results thereof, including but not limited to,
licensing and distribution rights, shall be the sole
and exclusive property of the corporation [i.e., IRC];
provided, however, the Corporation shall have no
ownership rights or rights which may be deemed to be
a sub-license to the extent that any of the foregoing
constitutes a "Patent Right" or an invention or
improvement covered thereby as defined in the agreement
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