Common use of Collaboration Patents Clause in Contracts

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) 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 such Collaboration Patents. As used herein, “prosecution” shall include interferences, re-examinations, reissues, oppositions and the like. { * } = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. THE NOTATION “[RESERVED]” IS ORIGINAL, 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. 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) ensure [ * ] 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 Sunesis receives 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 correspondence between Biogen Idec and/or outside legal counsel and/or substantive office actions or any governmental offices relating to such preparationother substantive documents that [ * ] receives from any patent office, filingincluding without limitation notice of all interferences, 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 such Collaboration Patents. As used herein, “prosecution” shall include interferencesreissues, 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 liketimely 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 [ * } = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. THE NOTATION “[RESERVED]” IS ORIGINAL, 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.