Common use of Collaboration Inventions Clause in Contracts

Collaboration Inventions. Upon the identification of a Collaboration Invention, the JPC shall (i) promptly discuss such Collaboration Invention, (ii) promptly discuss the desirability of filing a United States patent application covering such Collaboration Invention, as well as any foreign counterparts, (iii) make the final decision with respect to any such filings as soon as practicable, and (iv) designate the Party to be responsible for the supervision of the preparation, filing and prosecution of such patent application by outside patent counsel reasonably acceptable to the JPC which such responsible Party shall, unless the Collaboration Invention is jointly owned by the Parties, be the Party which owns such Collaboration Invention. Such outside patent counsel shall be instructed to act in the best interests of both Parties taking into consideration their relative interests under this Agreement. The Party responsible for the preparation, filing, prosecution and maintenance of Collaboration Invention Patent Rights shall consult with the Joint Patent Committee on all material decisions related to the preparation, filing, prosecution and maintenance of such Collaboration Invention Patent Rights, and shall use diligent efforts to implement the decisions of the Joint Patent Committee. The Party responsible for the preparation, filing and prosecution of Collaboration Invention Patent Rights shall provide the other Party with a copy of any patent application related to such Collaboration Invention Patent Rights prior to filing such applications in any jurisdiction for review and comment by the other Party, shall consult with the other Party with respect to such application, and shall supply the other Party with notice of its filing date and serial number. The Party responsible for each patent application shall keep the other Party advised of the status of the actual and prospective patent filings, including, without limitation, the grant of any Collaboration Invention Patent Rights, and shall provide advance copies of any official filings or correspondence related to the filing, prosecution and maintenance of such patent filings for review and comment by the other Party. Any disputes between the Parties related to the preparation, filing, prosecution and maintenance of Collaboration Invention Patent Rights shall be brought to the attention of the JPC for resolution. The Party responsible for a patent application shall not cease the prosecution and/or maintenance of any such Collaboration Invention Patent Rights in any country or elect not to file a patent application unless the JPC agrees to such action. Subject to (i) the grant of licenses to Biogen and Elan under Article 8, and (ii) the exclusivity provisions of Section 2.3, each Party shall be free to exploit its Collaboration Invention Patent Rights within the Territory without restriction. Anything in this Agreement to the contrary notwithstanding, a Party may choose to file, prosecute and maintain solely-owned Collaboration Inventions using its own internal patent attorneys.

Collaboration Inventions. Upon Wyeth shall have the identification of a first right to prepare, file, prosecute and maintain any Patent Right claiming any Collaboration Invention, Invention throughout the JPC world. Wyeth shall (i) promptly discuss such Collaboration Invention, (ii) promptly discuss give ViroPharma an opportunity to review the desirability of filing a United States patent application covering such Collaboration Invention, as well as any foreign counterparts, (iii) make the final decision with respect to any such filings as soon as practicable, and (iv) designate the Party to be responsible for the supervision text of the preparation, filing and prosecution of such patent application by outside patent counsel reasonably acceptable to the JPC which such responsible Party shall, unless the Collaboration Invention is jointly owned by the Parties, be the Party which owns such Collaboration Invention. Such outside patent counsel shall be instructed to act in the best interests of both Parties taking into consideration their relative interests under this Agreement. The Party responsible for the preparation, applications before filing, prosecution and maintenance of Collaboration Invention Patent Rights shall consult with the Joint Patent Committee on all material decisions related to the preparation, filing, prosecution and maintenance of such Collaboration Invention Patent RightsViroPharma with respect thereto, and shall use diligent efforts to implement the decisions of the Joint Patent Committee. The Party responsible for the preparation, filing and prosecution of Collaboration Invention Patent Rights shall provide the other Party supply ViroPharma with a copy of any patent application related to such Collaboration Invention Patent Rights prior to filing such the applications in any jurisdiction for review and comment by the other Partyas filed, shall consult with the other Party with respect to such application, and shall supply the other Party together with notice of its filing date and serial number. The Party responsible for each patent application Wyeth shall keep the other Party ViroPharma advised of the status of the actual and prospective patent filings, filings (including, without limitation, the grant of any Collaboration Invention Patent Rights), and shall provide advance copies of any official filings or correspondence related to the filing, prosecution and maintenance of such patent filings filings. ViroPharma shall reimburse Wyeth for review and comment fifty percent (50%) of the costs incurred by the other Party. Any disputes between the Parties related to the preparationWyeth in preparing, filing, prosecuting and maintaining such Patent Rights, which reimbursement will be made pursuant to invoices submitted by Wyeth to ViroPharma no more often than once per Calendar Quarter. If either Party at any time declines to share in the costs of filing, prosecuting and maintaining any such Patent Right in the Field, on a country by country basis, such Party shall provide the other Party with thirty (30) days prior written notice to such effect, in which event, such Party shall (i) have no responsibility for any expenses incurred in connection with such Patent Right after the end of such thirty (30) day period and (ii) if the other Party elects to continue prosecution or maintenance, assign to the other Party all of its right, title and interest in and to such Patent Right and the underlying Collaboration Invention. If the other Party elects to continue prosecution or maintenance, the assigning Party shall execute such documents and perform such acts, at the receiving Party's expense, as may be reasonably necessary to effect an assignment of such Patent Rights to the receiving Party on a country by country basis and to allow the receiving Party to continue the prosecution and maintenance of such Patent Right. Any such assignment shall be completed in a timely manner to allow the receiving Party to continue such prosecution or maintenance. Upon the assignment of such Patent Right to the other Party, such Patent Right shall cease to be a Collaboration Patent Right on a country by country basis for purposes of this Agreement, and, thereafter shall be considered to be a Non-Collaboration Invention Patent Rights shall be brought to the attention of the JPC Party receiving such assignment for resolution. The Party responsible for a patent application shall not cease the prosecution and/or maintenance all purposes of any such Collaboration Invention Patent Rights in any country or elect not to file a patent application unless the JPC agrees to such action. Subject to (i) the grant of licenses to Biogen and Elan under Article 8, and (ii) the exclusivity provisions of Section 2.3, each Party shall be free to exploit its Collaboration Invention Patent Rights within the Territory without restriction. Anything in this Agreement to the contrary notwithstanding, a Party may choose to file, prosecute and maintain solely-owned Collaboration Inventions using its own internal patent attorneysAgreement.

Collaboration Inventions. Upon AHPC shall have the identification of a first right to prepare, file, prosecute and maintain any Patent Right claiming any Collaboration Invention, Invention throughout the JPC world. AHPC shall (i) promptly discuss such Collaboration Invention, (ii) promptly discuss give ViroPharma an opportunity to review the desirability of filing a United States patent application covering such Collaboration Invention, as well as any foreign counterparts, (iii) make the final decision with respect to any such filings as soon as practicable, and (iv) designate the Party to be responsible for the supervision text of the preparation, filing and prosecution of such patent application by outside patent counsel reasonably acceptable to the JPC which such responsible Party shall, unless the Collaboration Invention is jointly owned by the Parties, be the Party which owns such Collaboration Invention. Such outside patent counsel shall be instructed to act in the best interests of both Parties taking into consideration their relative interests under this Agreement. The Party responsible for the preparation, applications before filing, prosecution and maintenance of Collaboration Invention Patent Rights shall consult with the Joint Patent Committee on all material decisions related to the preparation, filing, prosecution and maintenance of such Collaboration Invention Patent RightsViroPharma with respect thereto, and shall use diligent efforts to implement the decisions of the Joint Patent Committee. The Party responsible for the preparation, filing and prosecution of Collaboration Invention Patent Rights shall provide the other Party supply ViroPharma with a copy of any patent application related to such Collaboration Invention Patent Rights prior to filing such the applications in any jurisdiction for review and comment by the other Partyas filed, shall consult with the other Party with respect to such application, and shall supply the other Party together with notice of its filing date and serial number. The Party responsible for each patent application AHPC shall keep the other Party ViroPharma advised of the status of the actual and prospective patent filings, filings (including, without limitation, the grant of any Collaboration Invention Patent Rights), and shall provide advance copies of any official filings or correspondence related to the filing, prosecution and maintenance of such patent filings filings. ViroPharma shall reimburse AHPC for review and comment fifty percent (50%) of the costs incurred by the other Party. Any disputes between the Parties related to the preparationAHPC in preparing, filing, prosecuting and maintaining such Patent Rights, which reimbursement will be made pursuant to invoices submitted by AHPC to ViroPharma no more often than once per Calendar Quarter. If either Party at any time declines to share in the costs of filing, prosecuting and maintaining any such Patent Right in the Field, on a country by country basis, such Party shall provide the other Party with thirty (30) days prior written notice to such effect, in which event, such Party shall (i) have no responsibility for any expenses incurred in connection with such Patent Right after the end of such thirty (30) day period and (ii) if the other Party elects to continue prosecution or maintenance, assign to the other Party all of its right, title and interest in and to such Patent Right and the underlying Collaboration Invention. If the other Party elects to continue prosecution or maintenance, the assigning Party shall execute such documents and perform such acts, at the receiving Party's expense, as may be reasonably necessary to effect an assignment of such Patent Rights to the receiving Party on a country by country basis and to allow the receiving Party to continue the prosecution and maintenance of such Patent Right. Any such assignment shall be completed in a timely manner to allow the receiving Party to continue such prosecution or maintenance. Upon the assignment of such Patent Right to the other Party, such Patent Right shall cease to be a Collaboration Patent Right on a country by country basis for purposes of this Agreement, and, thereafter shall be considered to be a Non- Collaboration Invention Patent Rights shall be brought to the attention of the JPC Party receiving such assignment for resolution. The Party responsible for a patent application shall not cease the prosecution and/or maintenance all purposes of any such Collaboration Invention Patent Rights in any country or elect not to file a patent application unless the JPC agrees to such action. Subject to (i) the grant of licenses to Biogen and Elan under Article 8, and (ii) the exclusivity provisions of Section 2.3, each Party shall be free to exploit its Collaboration Invention Patent Rights within the Territory without restriction. Anything in this Agreement to the contrary notwithstanding, a Party may choose to file, prosecute and maintain solely-owned Collaboration Inventions using its own internal patent attorneysAgreement.

Collaboration Inventions. Upon the identification of a Collaboration Invention, the JPC shall (i) promptly discuss such Collaboration Invention, (ii) promptly discuss the desirability of filing a United States patent application covering such Collaboration Invention, as well as any foreign counterparts, (iii) make the final decision with respect to any such filings as soon as practicable, and (iv) designate the Party to be responsible for the supervision of the preparation, filing and prosecution of such patent application by outside patent counsel reasonably acceptable to the JPC which such responsible Party shall, unless the Collaboration Invention is jointly owned by the Parties, be the Party which owns such Collaboration Invention. Such outside patent counsel shall be instructed to act in the best interests of both Parties Parties, taking into consideration their relative interests under this Agreement. The Party responsible for the preparation, filing, prosecution and maintenance of Collaboration Invention Patent Rights shall consult with the Joint Patent Committee other Party on all material decisions related to the preparation, filing, prosecution and maintenance of such Collaboration Invention Patent Rights, and shall use diligent efforts to implement the decisions concerns of the Joint Patent Committeeother Party. The Party responsible for the preparation, filing and prosecution of Collaboration Invention Patent Rights shall provide the other Party with a copy of any patent application related to such Collaboration Invention Patent Rights prior to filing such applications in any jurisdiction for review and comment by the other Party, shall consult with the other Party with respect to such application, and shall supply the other Party with notice of its filing date and serial number. The Party responsible for each patent application shall keep the other Party advised of the status of the actual and prospective patent filings, including, without limitation, the grant of any Collaboration Invention Patent Rights, and shall provide advance copies of any official filings or correspondence related to the filing, prosecution and maintenance of such patent filings for review and comment by the other Party. Any disputes between the Parties related to the preparation, filing, prosecution and maintenance of Collaboration Invention Patent Rights shall be brought to the attention of the JPC for resolution. The Party responsible for a patent application shall not cease the prosecution and/or maintenance of any such Collaboration Invention Patent Rights in any country or elect not to file a patent application unless without the JPC agrees to such actionprior consent of the other Party, which consent shall not be unreasonably withheld. Subject to (i) the grant of licenses to Biogen and Elan ICOS under Article 8, 8 and (ii) the exclusivity provisions of Section 2.32.5, each Party shall be free to exploit its Collaboration Invention Patent Rights within the Territory without restriction. Anything in this Agreement to the [ * ] designates portions of this document that have been omitted pursuant to a request for confidential treatment filed separately with the Commission. contrary notwithstanding, a Party may choose to file, prosecute and maintain solely-owned Collaboration Inventions using its own internal patent attorneys.