Ambit Program Patents and Joint Program Patents. Subject to the remainder of this Section 8.3, Ambit shall, either itself or through the use of outside counsel selected by Ambit and reasonably acceptable to Astellas, direct and control the Prosecution of all Ambit Program Patents, in collaboration and consultation with Astellas as provided below. Promptly after the Parties identify a potentially patentable invention within the Joint Program Know-How, the Parties shall discuss whether to file a Joint Program Patent claiming such invention, and if so which Party shall take the lead in directing and controlling the Prosecution of such Joint Program Patent. Astellas shall generally have the first right to control Prosecution of Joint Program Patents; provided, however, that Astellas shall consider in good faith any request by Ambit to control Prosecution, taking into account the subject matter of the Joint Program Patent at issue and its similarity or difference from the Ambit Licensed Patents and each Party’s respective Program Patents. For each Joint Program Patent that the Parties agree to file, the Lead Prosecuting Party (as defined below) therefor shall direct and control the Prosecution of the Joint Program Patent (in all countries where the Parties agree to file such applications), using outside patent counsel mutually agreeable to the Parties, and in collaboration and consultation with the other Party. Subject to the opt-out provisions below, the Parties shall bear equally all reasonable costs and expenses of obtaining and maintaining the Joint Program Patents and the Ambit Program Patents (the “Shared Cost Patents”) during the Term, including reasonable fees and expenses paid to outside legal counsel and experts. Within thirty (30) days following the end of a Calendar Quarter, the Lead Prosecuting Party for any of the Shared Cost Patents shall provide to the other Party an invoice setting forth the costs and expenses (with detail showing the basis for all such charges) of the Prosecution it conducts on such Patents, and the other Party shall reimburse the Lead Prosecuting Party for one-half of such costs and expenses, within sixty (60) days of the invoice.
Appears in 4 contracts
Samples: Commercialization Agreement (Ambit Biosciences Corp), Commercialization Agreement (Ambit Biosciences Corp), Commercialization Agreement (Ambit Biosciences Corp)
