Common use of Assigned Patents Clause in Contracts

Assigned Patents. Subject to the terms and conditions contained herein, and subject to TAKEDA’s receipt of TOBIRA’s payment of the upfront milestone pursuant to Article 4.A.(i), TAKEDA shall assign and transfer irrevocably (but subject to TAKEDA’s right to request to transfer and/or abandon pursuant to Article 17.B.(c) hereof) to TOBIRA and TOBIRA shall accept such assignment and transfer and take over the patents and patent applications listed in the patent list attached hereto as Schedule 1(5), in accordance with the terms and conditions herein; provided, however, TAKEDA may, before such assignment, delete, amend or disclaim the claimed inventions other than those of the Compounds(i.e., claimed inventions of the composition of matter of the Compounds per se) from such patents and patent applications and move such deleted, amended or disclaimed inventions, in part or whole, into other patent(s) and patent application(s) derived therefrom (the patents and patent applications listed in the patent list attached hereto as Schedule 1(5), after such deletion, amendment, disclaimer, if taken, shall be hereinafter called the “Assigned Patents” and the patents and patent applications thus made by moving the deleted, amended or disclaimed inventions shall be hereinafter called the “Other Patents”.). TAKEDA shall take necessary procedures for such deletion, amendment and disclaimer within three (3) months after the receipt of TOBIRA’s payment of the upfront milestone pursuant to Article 4.A.(i). For the avoidance of doubt, TAKEDA shall not be under any obligations to, including without limitation obligation to prosecute or maintain, the Other Patents , and TAKEDA shall be entitled to dispose of , abandon or modify such Other Patents at its sole discretion, provided, however, if such Other Patents fall under the definition of the Ancillary Patents set forth in Article 2.B., then such Other Patents shall be added to and treated as the Ancillary Patents. If TAKEDA desires to dispose of or abandon the part or scope of the Other Patents which part or scope covers the inventions of the Specific Compounds (i.e., the composition of matter of the Specific Compounds per se) (hereinafter called the “Specific Compounds Scope”), TAKEDA shall provide TOBIRA with thirty (30) days prior written notice of such desire, and, if TOBIRA so requests within such thirty (30) days, shall provide TOBIRA with the opportunity to prosecute and maintain such Specific Compounds Scope at TOBIRA’s expense, in such case (a) TAKEDA shall assign such Specific Compounds Scope to TOBIRA, and TOBIRA shall take necessary procedures of ownership change, at TOBIRA’s cost and responsibility, within one (1) year after above TAKEDA’s notice, (b) thereafter, the Specific Compounds shall be treated as and included in the definition of the “Principal Compounds”, and (c) the Specific Compounds Scope shall be treated as and included in the definition of the “Assigned Patents”.

Assigned Patents. Subject Sellers’ representations, warranties and disclosures set forth in this Section 3.2 and Section 3.3 (to the extent Section 3.3 deals with the Assigned Patents) shall not apply to any fact, circumstance or matter arising prior to the period before July 29, 2011 (the “Ownership Date”) even if such fact, circumstance or matter continued or continues after the Ownership Date (the 10 “Nortel Exception”); provided that Sellers’ representations and warranties shall be to Sellers’ Knowledge (even prior to the Ownership Date) where Sellers’ Knowledge is indicated in this Section 3.2. Sellers’ representations, warranties and disclosures set forth in this Section 3.2 and Section 3.3 (to the extent Section 3.3 deals with the Assigned Patents) shall not apply to any Jointly Owned Patent(s) to the extent that such representations, warranties and/or disclosures are inaccurate or incorrect as a result of any failure to obtain any consent or waiver required for the assignment thereof, whether at Law or pursuant to any Existing Encumbrance, including, without limitation, any joint ownership agreement. (a) Except as set forth in Schedule 3.2(a), Sellers have legal, good and marketable title to all patents and pending applications identified on Schedule 1 to A attached hereto and the Assigned Patents. The list of patents and patent applications set forth on Schedule 1 of the Patent Assignment Agreement is a complete and accurate list of all of the patents and patent applications owned by any of the Sellers as of the date hereof. Sellers have all requisite power and authority (which in each case is not subject to revocation or withdrawal of approval by any partner or member of any of the Sellers) to assign all of such patents and pending applications and the Assigned Patents in accordance with the terms of this Agreement. Sellers shall be entitled to update Schedule 1 prior to the Closing to reflect changes in the status of patents (without removal of such patents) that have expired or have been issued between the Agreement Date and conditions contained hereinthe Closing and the patents and patent applications that have been filed between the Agreement Date and Closing or have been abandoned in accordance with Section 5.8(a) between the Agreement Date and Closing, and for changes in filing or serial numbers (such as may occur in transitioning to the national phase for PCT applications or as may occur when transitioning to the national phase for European patents or patent applications) and/or to correct clerical errors originating from the PTO or any foreign patent office or the Sellers in connection with the Assigned Patents, in each case, of which Sellers have become aware between the Agreement Date and Closing. (b) Except as set forth in Schedule 3.2(b), neither the Sellers nor their Affiliates have granted or agreed to grant (i) any joint ownership rights in any patents or patent applications; (ii) exclusive license rights, or (iii) any other right to xxx for past, present and future infringements thereof. Except as set forth in Schedule 3.2(b), any patents or patent applications that are terminally disclaimed to any of the Assigned Patents have not been assigned, transferred or otherwise conveyed by Sellers (nor have any patents or patent applications that claim priority to (directly or indirectly), or the benefit of the filing date of, any such terminally disclaimed patents or patent applications or their parent patents or patent applications) in a manner that would make any of the Assigned Patents unenforceable. (c) Except as set forth in Schedule 3.2(c), the Assigned Patents are not subject to TAKEDA’s receipt any licenses, covenants not to xxx, liens, security interests, options, joint ownership interests, grants of TOBIRA’s payment enforcement rights or other Liens in each case granted by Sellers after the Ownership Date. (d) Except as set forth in Schedule 3.2(d), and notwithstanding the Nortel Exception, to the Sellers’ Knowledge (i) Sellers have legal, good and marketable title to all patents and patent applications in each Patent Family with respect to the patents and applications set forth on Schedule 1 to Exhibit A attached hereto; and (ii) the patents and patent applications described in subsection (i) of this Section 3.2(d) are not subject to any licenses, covenants not to xxx, liens, security interests, options, joint ownership interests, grants of enforcement rights or other Liens, in the case of both subsection (i) and subsection (ii), granted prior to the Ownership Date (other than title defects, licenses, covenants not to xxx, liens, security interests, options, joint ownership interests, grants of enforcement rights or other Liens as granted, disclosed or otherwise provided in the Nortel Agreements, including as disclosed in the disclosure schedules to the Nortel Agreements). Except as set forth in Schedule 3.2(d), and notwithstanding the Nortel Exception, to the Sellers’ Knowledge, none of the upfront milestone pursuant patents and patent applications described in subsection 11 (i) of this Section 3.2(d) that are subject to Article 4.A.(iterminal disclaimers have, prior to the Ownership Date, been assigned, transferred or otherwise conveyed (nor have any patents that claim priority to (directly or indirectly), TAKEDA shall assign or the benefit of the filing date of, any such patents or patent applications or their parent patents or patent applications) in a manner that would make the patents and transfer irrevocably patent applications described in subsection (but subject i) of this Section 3.2(d) unenforceable (other than as disclosed or otherwise provided in the Nortel Agreements, including as disclosed in the disclosure schedules to TAKEDA’s right the Nortel Agreements). (e) Except with respect to request to transfer and/or abandon pursuant to Article 17.B.(c) hereof) to TOBIRA and TOBIRA shall accept such assignment and transfer and take over the patents and patent applications listed in on Schedule 3.2(e) (which list identifies only the applicable patent list attached hereto as Schedule 1(5or patent application and the category (but not the identity) of the entity to which such patent or patent application was transferred), and except for patents or patent applications which have since expired or been abandoned (i) the Assigned Patents include all of the patents and patent applications sold to Sellers or Bidco, in accordance with the terms and conditions herein; provided, however, TAKEDA may, before such assignment, delete, amend or disclaim the claimed inventions other than those of the Compounds(i.e.Nortel Agreements (the “Nortel Patents”), claimed inventions and (ii) the Sellers have not sold, transferred, assigned (in whole or in part), exclusively licensed, granted enforcement rights with respect to, or otherwise disposed of any of the composition Nortel Patents or any other patents or patent applications. Each of matter of the Compounds per se) from such patents and patent applications and move such deleted, amended or disclaimed inventions, in part or whole, into other patent(s) and patent application(s) derived therefrom (the patents and patent applications listed set forth in Exhibit A to Schedule 3.2(e) was assigned (but for clarity, not necessarily recorded) to the patent list attached hereto applicable Parent Entity effective as Schedule 1(5)of the 2012 calendar year, after such deletion, amendment, disclaimer, if taken, shall be hereinafter called the “Assigned Patents” and each of the patents and patent applications thus made by moving the deleted, amended or disclaimed inventions shall be hereinafter called the “Other Patents”.). TAKEDA shall take necessary procedures for such deletion, amendment and disclaimer within three (3) months after the receipt of TOBIRA’s payment of the upfront milestone pursuant to Article 4.A.(i). For the avoidance of doubt, TAKEDA shall not be under any obligations to, including without limitation obligation to prosecute or maintain, the Other Patents , and TAKEDA shall be entitled to dispose of , abandon or modify such Other Patents at its sole discretion, provided, however, if such Other Patents fall under the definition of the Ancillary Patents set forth in Article 2.B.Exhibit B to Schedule 3.2(e) was assigned (but for clarity, then such Other Patents shall be added not necessarily recorded) to and treated Spherix effective as the Ancillary Patents. If TAKEDA desires to dispose of or abandon the part or scope of the Other 2013 calendar year. (f) All registration and maintenance fees, annuities, renewals, Taxes and other payments owed to the PTO or any foreign patent office in connection with the Assigned Patents which part or scope covers have been timely paid and are current, and to the inventions extent small entity fees were paid to the PTO for any Assigned Patent, such reduced fees were appropriate because the payor qualified to pay small entity fees at the time of such payment, and had not licensed rights in any of the Specific Compounds (i.e., the composition Assigned Patents to an entity that was not a small entity. Schedule 3.2(f) sets forth a true and complete list of matter of the Specific Compounds per se) (hereinafter called the “Specific Compounds Scope”), TAKEDA shall provide TOBIRA with all material payments and filings that must be made within thirty (30) days of January 15, 2015 in order to register or maintain the Assigned Patents, including payment of any renewal fee, annuity fee and Tax or the filing of any document, application or certificate for the purposes of obtaining, maintaining, perfecting, preserving or renewing any Assigned Patents (in each case which must be made during such thirty-day period). Sellers shall, and shall be entitled to, update Schedule 3.2(f) within five (5) days prior written notice of such desire, and, if TOBIRA so requests to the Closing to reflect any changes that have occurred between the Agreement Date and Closing in the actions that must be taken within such thirty (30) daysdays after the Closing with respect to any of the Assigned Patents. (g) Except as set forth in Schedule 3.2(g) and other than the Patent Litigations, shall provide TOBIRA with none of the opportunity to prosecute and maintain such Specific Compounds Scope at TOBIRA’s expenseAssigned Patents have been asserted by Sellers against any third party (other than any Buyer Subscriber Party) in writing, in a licensing or other context, in a manner in which such case (a) TAKEDA shall assign such Specific Compounds Scope third party has been accused of infringing one or more of the Assigned Patents or offered any licenses or other rights by the Sellers in respect of the Assigned Patents. “Patent Litigations” means any and all lawsuits or proceedings relating to TOBIRA, and TOBIRA shall take necessary procedures of ownership change, at TOBIRA’s cost and responsibility, within one (1) year after above TAKEDA’s notice, (b) thereafter, the Specific Compounds shall be treated as and included any Assigned Patents in any state or federal court in the definition of United States, in any court or tribunal in any foreign country, or before the “Principal Compounds”United States International Trade Commission, and (cincluding, without limitation, those Actions or Proceedings identified in Schedule 3.2(g) the Specific Compounds Scope shall be treated as and included in the definition of the “Assigned Patents”any matters on appeal from any such Actions or Proceedings.

Assigned Patents. Subject Sellers’ representations, warranties and disclosures set forth in this Section 3.2 and Section 3.3 (to the extent Section 3.3 deals with the Assigned Patents) shall not apply to any fact, circumstance or matter arising prior to the period before July 29, 2011 (the “Ownership Date”) even if such fact, circumstance or matter continued or continues after the Ownership Date (the 10 “Nortel Exception”); provided that Sellers’ representations and warranties shall be to Sellers’ Knowledge (even prior to the Ownership Date) where Sellers’ Knowledge is indicated in this Section 3.2. Sellers’ representations, warranties and disclosures set forth in this Section 3.2 and Section 3.3 (to the extent Section 3.3 deals with the Assigned Patents) shall not apply to any Jointly Owned Patent(s) to the extent that such representations, warranties and/or disclosures are inaccurate or incorrect as a result of any failure to obtain any consent or waiver required for the assignment thereof, whether at Law or pursuant to any Existing Encumbrance, including, without limitation, any joint ownership agreement. (a) Except as set forth in Schedule 3.2(a), Sellers have legal, good and marketable title to all patents and pending applications identified on Schedule 1 to A attached hereto and the Assigned Patents. The list of patents and patent applications set forth on Schedule 1 of the Patent Assignment Agreement is a complete and accurate list of all of the patents and patent applications owned by any of the Sellers as of the date hereof. Sellers have all requisite power and authority (which in each case is not subject to revocation or withdrawal of approval by any partner or member of any of the Sellers) to assign all of such patents and pending applications and the Assigned Patents in accordance with the terms of this Agreement. Sellers shall be entitled to update Schedule 1 prior to the Closing to reflect changes in the status of patents (without removal of such patents) that have expired or have been issued between the Agreement Date and conditions contained hereinthe Closing and the patents and patent applications that have been filed between the Agreement Date and Closing or have been abandoned in accordance with Section 5.8(a) between the Agreement Date and Closing, and for changes in filing or serial numbers (such as may occur in transitioning to the national phase for PCT applications or as may occur when transitioning to the national phase for European patents or patent applications) and/or to correct clerical errors originating from the PTO or any foreign patent office or the Sellers in connection with the Assigned Patents, in each case, of which Sellers have become aware between the Agreement Date and Closing. (b) Except as set forth in Schedule 3.2(b), neither the Sellers nor their Affiliates have granted or agreed to grant (i) any joint ownership rights in any patents or patent applications; (ii) exclusive license rights, or (iii) any other right to xxx for past, present and future infringements thereof. Except as set forth in Schedule 3.2(b), any patents or patent applications that are terminally disclaimed to any of the Assigned Patents have not been assigned, transferred or otherwise conveyed by Sellers (nor have any patents or patent applications that claim priority to (directly or indirectly), or the benefit of the filing date of, any such terminally disclaimed patents or patent applications or their parent patents or patent applications) in a manner that would make any of the Assigned Patents unenforceable. (c) Except as set forth in Schedule 3.2(c), the Assigned Patents are not subject to TAKEDA’s receipt any licenses, covenants not to xxx, liens, security interests, options, joint ownership interests, grants of TOBIRA’s payment enforcement rights or other Liens in each case granted by Sellers after the Ownership Date. (d) Except as set forth in Schedule 3.2(d), and notwithstanding the Nortel Exception, to the Sellers’ Knowledge (i) Sellers have legal, good and marketable title to all patents and patent applications in each Patent Family with respect to the patents and applications set forth on Schedule 1 to Exhibit A attached hereto; and (ii) the patents and patent applications described in subsection (i) of this Section 3.2(d) are not subject to any licenses, covenants not to xxx, liens, security interests, options, joint ownership interests, grants of enforcement rights or other Liens, in the case of both subsection (i) and subsection (ii), granted prior to the Ownership Date (other than title defects, licenses, covenants not to xxx, liens, security interests, options, joint ownership interests, grants of enforcement rights or other Liens as granted, disclosed or otherwise provided in the Nortel Agreements, including as disclosed in the disclosure schedules to the Nortel Agreements). Except as set forth in Schedule 3.2(d), and notwithstanding the Nortel Exception, to the Sellers’ Knowledge, none of the upfront milestone pursuant patents and patent applications described in subsection 11 (i) of this Section 3.2(d) that are subject to Article 4.A.(iterminal disclaimers have, prior to the Ownership Date, been assigned, transferred or otherwise conveyed (nor have any patents that claim priority to (directly or indirectly), TAKEDA shall assign or the benefit of the filing date of, any such patents or patent applications or their parent patents or patent applications) in a manner that would make the patents and transfer irrevocably patent applications described in subsection (but subject i) of this Section 3.2(d) unenforceable (other than as disclosed or otherwise provided in the Nortel Agreements, including as disclosed in the disclosure schedules to TAKEDA’s right the Nortel Agreements). (e) Except with respect to request to transfer and/or abandon pursuant to Article 17.B.(c) hereof) to TOBIRA and TOBIRA shall accept such assignment and transfer and take over the patents and patent applications listed in on Schedule 3.2(e) (which list identifies only the applicable patent list attached hereto as Schedule 1(5or patent application and the category (but not the identity) of the entity to which such patent or patent application was transferred), and except for patents or patent applications which have since expired or been abandoned (i) the Assigned Patents include all of the patents and patent applications sold to Sellers or Bidco, in accordance with the terms and conditions herein; provided, however, TAKEDA may, before such assignment, delete, amend or disclaim the claimed inventions other than those of the Compounds(i.e.Nortel Agreements (the “Nortel Patents”), claimed inventions and (ii) the Sellers have not sold, transferred, assigned (in whole or in part), exclusively licensed, granted enforcement rights with respect to, or otherwise disposed of any of the composition Nortel Patents or any other patents or patent applications. Each of matter of the Compounds per se) from such patents and patent applications and move such deleted, amended or disclaimed inventions, in part or whole, into other patent(s) and patent application(s) derived therefrom (the patents and patent applications listed in the patent list attached hereto as Schedule 1(5), after such deletion, amendment, disclaimer, if taken, shall be hereinafter called the “Assigned Patents” and the patents and patent applications thus made by moving the deleted, amended or disclaimed inventions shall be hereinafter called the “Other Patents”.). TAKEDA shall take necessary procedures for such deletion, amendment and disclaimer within three (3) months after the receipt of TOBIRA’s payment of the upfront milestone pursuant to Article 4.A.(i). For the avoidance of doubt, TAKEDA shall not be under any obligations to, including without limitation obligation to prosecute or maintain, the Other Patents , and TAKEDA shall be entitled to dispose of , abandon or modify such Other Patents at its sole discretion, provided, however, if such Other Patents fall under the definition of the Ancillary Patents set forth in Article 2.B., then such Other Patents shall be added Exhibit A to and treated as the Ancillary Patents. If TAKEDA desires to dispose of or abandon the part or scope of the Other Patents which part or scope covers the inventions of the Specific Compounds (i.e., the composition of matter of the Specific Compounds per se) (hereinafter called the “Specific Compounds Scope”), TAKEDA shall provide TOBIRA with thirty (30) days prior written notice of such desire, and, if TOBIRA so requests within such thirty (30) days, shall provide TOBIRA with the opportunity to prosecute and maintain such Specific Compounds Scope at TOBIRA’s expense, in such case (a) TAKEDA shall assign such Specific Compounds Scope to TOBIRA, and TOBIRA shall take necessary procedures of ownership change, at TOBIRA’s cost and responsibility, within one (1) year after above TAKEDA’s notice, (b) thereafter, the Specific Compounds shall be treated as and included in the definition of the “Principal Compounds”, and (c) the Specific Compounds Scope shall be treated as and included in the definition of the “Assigned Patents”.Schedule 3.2

Assigned Patents. Subject (a) GSK hereby assigns, and shall assign promptly, to CK all Assigned Patents. CK shall [***] for its [***] that [***] to effect such assignment, including any [***] of [***], within [***] ([***]) [***] of [***] of an [***]. Upon such assignment, CK or its designee shall control in their sole discretion, the Prosecution and Maintenance and enforcement of the Assigned Patents, and all other Patents based upon or that claim priority to an Assigned Patent, at its sole cost and expense. For a period of [***] ([***]) [***] after the Amendment * Certain information on this page has been omitted and filed separately with the commission. Confidential treatment has been requested with respect to the terms omitted portions. Effective Date, GSK, at GSK’s cost, shall provide reasonable assistance to CK with respect to the Prosecution and conditions contained hereinMaintenance of all such Assigned Patents. (b) If GSK exercises the GSK Option, CK shall license to GSK, in accordance with Section 5.2 of the Agreement, all Assigned Patents for Optioned Products (including Assigned Patents claiming KSP for purposes thereof), in addition to the other licenses granted by CK to GSK under Section 5.2.1 of the Agreement, on exercise of the GSK Option, and GSK and CK shall cooperate with respect to the Prosecution and Maintenance and enforcement of all such Assigned Patents in accordance with the provisions in Article 8 of the Agreement. As provided in Section 19, if GSK exercises the GSK Option, GSK shall reimburse CK [***]% of the [***] Patent Costs of the Assigned Patents for the Optioned Product(s), as incurred by CK after the Amendment Effective Date, subject to the cap set forth in Section 19(a)(ii). In addition, GSK shall reimburse CK [***] percent ([***]%) of the costs of [***] related to the Optioned Products as incurred by CK after the Amendment Effective Date, subject to the cap set forth in Section 19(a)(ii). (c) If, after the Amendment Effective Date and prior to expiration of GSK Option, CK intends to [***] or [***], CK shall notify GSK of such intention at least [***] ([***]) [***] prior to the date upon which [***] or [***] (or such shorter period as [***] ([***]) [***]), and GSK shall thereupon have the right, but not the obligation, to [***] of such [***] at its own expense with [***] of its [***]. At GSK’s request, CK shall [***], at GSK’s expense, any [***] that CK [***] or [***] without [***]. For clarity, all [***] to GSK shall [***] to CK under the Agreement, and subject to TAKEDA’s receipt of TOBIRA’s payment the [***] to CK, to the same extent [***] and [***] to CK under each of the upfront milestone pursuant to Article 4.A.(i), TAKEDA shall assign Collaboration Technology and transfer irrevocably (but subject to TAKEDA’s right to request to transfer and/or abandon pursuant to Article 17.B.(c) hereof) to TOBIRA and TOBIRA shall accept such assignment and transfer and take over the patents and patent applications listed in the patent list attached hereto as Schedule 1(5), in accordance with the terms and conditions herein; provided, however, TAKEDA may, before such assignment, delete, amend or disclaim the claimed inventions other than those of the Compounds(i.ePost-Collaboration Technology., claimed inventions of the composition of matter of the Compounds per se) from such patents and patent applications and move such deleted, amended or disclaimed inventions, in part or whole, into other patent(s) and patent application(s) derived therefrom (the patents and patent applications listed in the patent list attached hereto as Schedule 1(5), after such deletion, amendment, disclaimer, if taken, shall be hereinafter called the “Assigned Patents” and the patents and patent applications thus made by moving the deleted, amended or disclaimed inventions shall be hereinafter called the “Other Patents”.). TAKEDA shall take necessary procedures for such deletion, amendment and disclaimer within three (3) months after the receipt of TOBIRA’s payment of the upfront milestone pursuant to Article 4.A.(i). For the avoidance of doubt, TAKEDA shall not be under any obligations to, including without limitation obligation to prosecute or maintain, the Other Patents , and TAKEDA shall be entitled to dispose of , abandon or modify such Other Patents at its sole discretion, provided, however, if such Other Patents fall under the definition of the Ancillary Patents set forth in Article 2.B., then such Other Patents shall be added to and treated as the Ancillary Patents. If TAKEDA desires to dispose of or abandon the part or scope of the Other Patents which part or scope covers the inventions of the Specific Compounds (i.e., the composition of matter of the Specific Compounds per se) (hereinafter called the “Specific Compounds Scope”), TAKEDA shall provide TOBIRA with thirty (30) days prior written notice of such desire, and, if TOBIRA so requests within such thirty (30) days, shall provide TOBIRA with the opportunity to prosecute and maintain such Specific Compounds Scope at TOBIRA’s expense, in such case (a) TAKEDA shall assign such Specific Compounds Scope to TOBIRA, and TOBIRA shall take necessary procedures of ownership change, at TOBIRA’s cost and responsibility, within one (1) year after above TAKEDA’s notice, (b) thereafter, the Specific Compounds shall be treated as and included in the definition of the “Principal Compounds”, and (c) the Specific Compounds Scope shall be treated as and included in the definition of the “Assigned Patents”.