-402-
to the licensing agreement (as required in the 1978 sale by
Sloan-Kettering to Newport), and, moreover, the license agreement
between Newport and IRC expressly provided that no ownership
rights in the technology to be developed by Newport would inure
to IRC to the extent that such technology or rights envisioned by
the agreement came within the definition of “Patent Rights” as
reserved by Sloan-Kettering in the 1978 sale to Newport. The
reservation by Sloan-Kettering in the 1978 sale to Newport
provided:
[the third-party license] shall have no ownership right 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 dated March 28, 1978 between Newport and Sloan-
Kettering Institute or is covered by the Assignment
Agreement between Newport and Paul Gordon dated April 26,
1971 (collectively the “Prior Agreements”).
In light of the reservation in the 1978 sale by Sloan-Kettering
to Newport and the broad definition of “Patent Rights” in the
same instrument, this Court concluded little, if anything, was
left to be acquired by IRC in the 1979 licensing agreement
between Newport and IRC.156 The Court stated: “In light of this
156 The Mar. 28, 1978, agreement wherein Sloan-Kettering
conveyed a one-half interest to Newport defined “patent right” as
follows:
a. Any U.S. patent application hereafter filed
covering any invention or improvement resulting from
the Collaborative Efforts, and division, continuation,
and continuation-in-part of any such application, and
any patent which shall issue based on such application,
(continued...)
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