Common use of Collaboration Patents Clause in Contracts

Collaboration Patents. (a) [ * ] shall be responsible for the Prosecution and Maintenance of the Collaboration Patents solely [ * ]. Notwithstanding the foregoing, [ * ] will use Commercially Reasonable Efforts to obtain a reasonable scope of patent protection for Compounds that satisfy the Pre-Candidate Selection Criteria covered by claims of such Collaboration Patents, using counsel of its own choice but reasonably acceptable to [ * ] informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including without limitation by providing copies of all substantive office actions or any other substantive documents that [ * ] receives from any patent office, including without limitation notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing [ * ] the timely opportunity to have input into all substantive aspects of such Prosecution and Maintenance. [ * ], with respect to the Prosecution and Maintenance of any such Patents. Any dispute regarding the Prosecution and Maintenance of any Collaboration Patents [ * ]. (b) GSK shall be responsible for the Prosecution and Maintenance of the Collaboration Patents solely owned by GSK. Notwithstanding the foregoing, GSK shall use Commercially Reasonable Efforts to consult with Dynavax in connection with the Prosecution and Maintenance of such Collaboration Patents. Any dispute regarding the Prosecution and Maintenance of any Collaboration Patents owned solely by GSK shall be [ * ]. (c) GSK shall be responsible for the Prosecution and Maintenance of the Collaboration Patents jointly owned by GSK and Dynavax. GSK shall keep Dynavax informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including without limitation by providing copies of all substantive office actions or any other substantive documents that GSK receives from any patent office, including without limitation notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing Dynavax the timely opportunity to have input into all substantive aspects of such Prosecution and Maintenance. GSK shall consult with Dynavax and shall take into account any comments from Dynavax in good faith, with respect to the Prosecution and Maintenance of any such Patents. Any dispute regarding the Prosecution and Maintenance of such Collaboration Patents shall be [ * ].

Collaboration Patents. Biogen Idec shall have the first right, using in-house or outside legal counsel selected by Biogen Idec, subject to approval, not to be unreasonably withheld by Sunesis, to prepare, file, prosecute maintain and obtain extensions of Collaboration Patents throughout the world. Biogen Idec shall: (a) [ * ] shall be responsible for ensure that Sunesis receives copies of all correspondence between Biogen Idec and/or outside legal counsel and/or any governmental offices relating to such preparation, filing, prosecution, maintenance, and obtaining of extensions, of Collaboration Patents, (b) timely consult with Sunesis regarding all substantive matters associated with such activities, (c) use reasonable efforts to periodically advise Sunesis on such activities and to respond to any reasonable inquiries Sunesis may from time to time raise in respect of such activities, and (d) not substantially negatively impact Sunesis’ rights under the Prosecution and Maintenance of the Collaboration Patents solely [ * ]. Notwithstanding the foregoing, [ * ] will use Commercially Reasonable Efforts to obtain a reasonable scope of patent protection for Compounds that satisfy the Pre-Candidate Selection Criteria covered by claims of such Collaboration Patents. As used herein, using counsel of its own choice but reasonably acceptable to [ * ] informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including without limitation by providing copies of all substantive office actions or any other substantive documents that [ * ] receives from any patent office, including without limitation notice of all “prosecution” shall include interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing [ * ] the timely opportunity to have input into all substantive aspects of such Prosecution and Maintenance. [ * ], with respect to the Prosecution and Maintenance of any such Patents. Any dispute regarding the Prosecution and Maintenance of any Collaboration Patents [ * ]. (b) GSK shall be responsible for the Prosecution and Maintenance of the Collaboration Patents solely owned by GSK. Notwithstanding the foregoing, GSK shall use Commercially Reasonable Efforts to consult with Dynavax in connection with the Prosecution and Maintenance of such Collaboration Patents. Any dispute regarding the Prosecution and Maintenance of any Collaboration Patents owned solely by GSK shall be [ * ]. (c) GSK shall be responsible for the Prosecution and Maintenance of the Collaboration Patents jointly owned by GSK and Dynavax. GSK shall keep Dynavax informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including without limitation by providing copies of all substantive office actions or any other substantive documents that GSK receives from any patent office, including without limitation notice of all interferences, reissues, re-examinationsoppositions and the like. { * } = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, oppositions or requests for patent term extensionsMARKED BY BRACKETS, and by providing Dynavax the timely opportunity to have input into all substantive aspects of such Prosecution and MaintenanceIS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. GSK shall consult with Dynavax and shall take into account any comments from Dynavax in good faithTHE NOTATION “[RESERVED]” IS ORIGINAL, with respect to the Prosecution and Maintenance of any such Patents. Any dispute regarding the Prosecution and Maintenance of such Collaboration Patents shall be [ * ]IS CURRENTLY IN THE DOCUMENT AND DOES NOT REFLECT INFORMATION REDACTED PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.

Collaboration Patents. (a) [ * ] Felicitex shall be responsible for have the Prosecution sole right (but not the obligation) to Prosecute and Maintenance of Maintain the Collaboration Patents solely [ * ]relating to the Research Program. Notwithstanding Felicitex acknowledges that Selvita has certain obligations to file patent applications under the foregoingSEL141 Grant and the related grant agreement with the Polish Agency for Enterprise Development (“SEL 141 Grant Agreement”). Felicitex will consider these obligations in a supportive manner. Any patent application filed for a Joint Collaboration Patent shall be filed in the name of both Parties and for a Selvita Collaboration Patent shall be filed in the name of Selvita. No less than thirty (30) days prior to filing of a Patent, [ * ] will use Commercially Reasonable Efforts Felicitex shall provide to obtain Selvita a reasonable scope copy of the proposed patent protection application for Compounds that satisfy review by Selvita and shall consider in good faith any comments or concerns raised by Selvita within twenty (20) days following receipt of the Pre-Candidate Selection Criteria covered by claims of such Collaboration Patents, using counsel of its own choice but reasonably acceptable to [ * ] patent application. Felicitex shall consult with and keep Selvita informed as to material developments with respect to the Prosecution and Maintenance of such Collaboration Patents, including without limitation by providing copies of all substantive office actions or any other substantive documents that [ * ] Felicitex receives from any patent office, including without limitation notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing [ * ] the timely opportunity to have input into all substantive aspects of such Prosecution and Maintenance. [ * ], Selvita shall fully cooperate with respect to the Prosecution and Maintenance of any such Patents. Any dispute regarding the Prosecution and Maintenance of any Collaboration Patents [ * ]. (b) GSK shall be responsible for the Felicitex in Prosecution and Maintenance of the Collaboration Patents solely owned Patents. (b) If Felicitex elects not to file or to continue to Prosecute or Maintain a Collaboration Patent, then it shall notify Selvita in writing at least ninety (90) days before any deadline applicable to the Prosecution or Maintenance of such Collaboration Patent, as the case may be, or any other date by GSKwhich an action must be taken to establish or preserve such Collaboration Patent in such country or possession. Notwithstanding In such case, at Selvita’s request, Selvita shall have the foregoingright to pursue the filing or support the continued Prosecution or Maintenance of such Collaboration Patent in its own name, GSK through patent counsel of Selvita’s choice and at Selvita’s cost and expense, and in such case the ownership in such Collaboration Patent shall use Commercially Reasonable Efforts then be assigned to consult Selvita. Any Collaboration Patent assumed by Selvita in accordance with Dynavax the foregoing shall, prospectively from the date of such assumption, be excluded from the Collaboration Patent as defined under this Agreement. Under Section 7.2.3(b), Selvita shall be likewise entitled to Prosecute and Maintain at its own expense (including, where possible, in connection with form of a separate Patent, such as a divisional application or continuation application) any claim to the subject matter of any Collaboration Patent that was first disclosed in such Collaboration Patent but not elected by Felicitex for further Prosecution and Maintenance. (c) The Parties agree to cooperate fully in the Prosecution and Maintenance of such Collaboration Patents. Any dispute regarding the Prosecution and Maintenance of any Collaboration Patents owned solely by GSK under this Agreement. Cooperation shall be [ * ]. include (ci) GSK shall be responsible for the Prosecution executing all papers and Maintenance of the Collaboration Patents jointly owned by GSK instruments, or requiring its employees or contractors to execute such papers and Dynavax. GSK shall keep Dynavax informed instruments, so as to material developments (aa) effectuate the ownership of intellectual property, (bb) enable Felicitex to Prosecute patent applications, and (cc) obtain and maintain any patent extensions, supplementary protection certificates, and the like with respect to the Prosecution and Maintenance of such any Collaboration Patents, including without limitation by providing copies of all substantive office actions or any other substantive documents that GSK receives from any patent office, including without limitation notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing Dynavax the timely opportunity to have input into all substantive aspects of such Prosecution and Maintenance. GSK shall consult with Dynavax and shall take into account any comments from Dynavax in good faith, with respect to the Prosecution and Maintenance of any such Patents. Any dispute regarding the Prosecution and Maintenance of such Collaboration Patents shall be [ * ].