Common use of Combined Therapy Inventions Clause in Contracts

Combined Therapy Inventions. All Combined Therapy Inventions shall be jointly owned by the Parties, and either Party shall have the right to freely exploit the Combined Therapy Inventions and Combined Therapy Patent Rights, both within and outside the scope of this Agreement, without accounting or any other obligation to the other Party (except as expressly set forth in this Section 6.1(c) and Section 6.3(d) with regard to the filing, prosecution, maintenance and enforcement of Combined Therapy Patent Rights) and each Party may use, exploit and grant licenses (with the right to sublicense) to Third Parties under its interest in such Combined Therapy Inventions and Combined Therapy Patent Rights. The Parties shall agree as to which Party, using outside counsel acceptable to both Parties, shall be responsible for preparing and prosecuting Patent applications and maintaining Patents within the Combined Therapy Patent Rights. The Party drafting and prosecuting any Combined Therapy Patent Right (the “Prosecuting Party”) shall keep the other Party (the “Non-Prosecuting Party”) advised as to material developments and all steps to be taken with respect to any such Patents and shall furnish the Non-Prosecuting Party with copies of applications for such Patents, amendments thereto and other related correspondence to and from Patent offices, and permit the Non-Prosecuting Party a reasonable opportunity to review and offer comments. The Non-Prosecuting Party shall reasonably assist and cooperate in obtaining, prosecuting and maintaining the Combined Therapy Patent Rights. Notwithstanding the foregoing, the Prosecuting Party shall not take any position in a submission to a Patent office that interprets the scope of a Patent or Patent application of the Non-Prosecuting Party without the prior written consent of such Non-Prosecuting Party. The Prosecuting Party shall be reimbursed for any costs and expenses incurred in prosecuting Combined Therapy Patent Rights and the subsequent maintenance of Combined Therapy Patent Rights by the Non-Prosecuting Party such that BMS shall be responsible for *** of such costs and Five Prime shall be responsible for *** of such costs. In case one of the two Parties decides not to file or maintain a Combined Therapy Patent Right application in a given country (and also elects not to reimburse the other Party for *** of the costs of prosecution and maintenance of such Combined Therapy Patent Right in such country), the other Party shall have the right to file or maintain such patent application in such country in its own name and at its own expense upon the prior consent of the other Party, which shall not be unreasonably withheld or delayed. In this case, the Party who decides not to file or maintain (and also decides not to reimburse the other Party for its share of the costs of) a joint application for a given country shall promptly assign its rights to the joint invention in said country to the Party who wishes to file or maintain said patent application. The Party who does not wish to file or maintain a patent application in any country shall assist in the timely provision of all documents required under national provisions to register said assignment of rights with the corresponding national authorities at the sole expense of the Party who wishes to file or maintain such patent application in that given country. *** INDICATES MATERIAL THAT WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT WAS REQUESTED. ALL SUCH OMITTED MATERIAL WAS FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. EXECUTION VERSION

Combined Therapy Inventions. (i) All Combined Therapy Inventions and Combined Therapy Patent Rights shall be jointly owned by the Parties, and either Party shall have the right to freely exploit use, exploit, and grant licenses (with the right to sublicense) to Third Parties under its interest in, the Combined Therapy Inventions and Combined Therapy Patent Rights, both within and outside the scope of this Agreement, without the consent of the other Party and without accounting or any other obligation to the other Party (except as expressly set forth in this Section 6.1(c) and Section 6.3(d) with regard to the filing, prosecution, maintenance and enforcement of Combined Therapy Patent Rights) and each Party may use, exploit and grant licenses (with the right to sublicense) to Third Parties under its interest in such Combined Therapy Inventions and Combined Therapy Patent Rights). The Parties shall agree as to which PartyRecipient, using outside counsel acceptable to both Parties, shall be responsible responsible, at its sole discretion, for preparing and prosecuting Patent applications and maintaining Patents within the Combined Therapy Patent Rights. The Party drafting and prosecuting any Combined Therapy Patent Right (the “Prosecuting Party”) Recipient shall keep the other Party (the “Non-Prosecuting Party”) BMS advised as to material developments and all steps to be taken with respect to prosecuting any such Patents Combined Therapy Patent Rights and shall furnish the Non-Prosecuting Party BMS with copies of applications for such PatentsCombined Therapy Patent Rights, amendments thereto and other related correspondence to and from Patent patent offices, and permit the Non-Prosecuting Party BMS a reasonable opportunity to review and offer commentscomments prior to submitting such applications and correspondence to the applicable governmental authority (and will consider BMS’ timely-made comments in good faith in preparing same). The Non-Prosecuting Party If BMS timely identifies to Recipient any position taken by Recipient in a proposed submission to a patent office with respect to a Combined Therapy Patent Right that BMS believes in good faith disparages any claimed subject matter of a BMS Independent Patent Right or BMS Study Patent Right, the Parties shall cooperate in good faith to modify that portion of such submission so as not to disparage such claimed subject matter. BMS shall reasonably assist and cooperate in obtaining, prosecuting and maintaining the Combined Therapy Patent Rights. Notwithstanding the foregoing, the Prosecuting Party BMS shall not take any position in a submission to a Patent office that interprets the scope reimburse Recipient for [***] of a Patent or Patent application of the Non-Prosecuting Party without the prior written consent of such Non-Prosecuting Party. The Prosecuting Party shall be reimbursed for any costs and expenses incurred by Recipient in filing, prosecuting and maintaining Combined Therapy Patent Rights Rights. From time to time, the Recipient shall invoice BMS such amounts and the subsequent maintenance of Combined Therapy Patent Rights by the Non-Prosecuting Party such that BMS shall be responsible for pay the Recipient such invoiced amounts within [*** *] days after receipt of such costs and Five Prime shall be responsible for *** of such costs. In case one of the two Parties decides not to file or maintain a Combined Therapy Patent Right application in a given country (and also elects not to reimburse the other Party for *** of the costs of prosecution and maintenance of such Combined Therapy Patent Right in such country), the other Party shall have the right to file or maintain such patent application in such country in its own name and at its own expense upon the prior consent of the other Party, which shall not be unreasonably withheld or delayed. In this case, the Party who decides not to file or maintain (and also decides not to reimburse the other Party for its share of the costs of) a joint application for a given country shall promptly assign its rights to the joint invention in said country to the Party who wishes to file or maintain said patent application. The Party who does not wish to file or maintain a patent application in any country shall assist in the timely provision of all documents required under national provisions to register said assignment of rights with the corresponding national authorities at the sole expense of the Party who wishes to file or maintain such patent application in that given country. *** INDICATES MATERIAL THAT WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT WAS REQUESTED. ALL SUCH OMITTED MATERIAL WAS FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. EXECUTION VERSIONan invoice therefor.

Combined Therapy Inventions. All Combined Therapy Inventions and Combined Therapy Patent Rights shall be jointly owned by the Parties, and either Party shall have the right to freely exploit the Combined Therapy Inventions and Combined Therapy Patent Rights, both within and outside the scope of this Agreement, without accounting or any other obligation to the other Party (except as expressly set forth in this Section 6.1(c) and Section 6.3(d) with regard to the filing, prosecution, maintenance and enforcement of Combined Therapy Patent Rights) and each Party may use, exploit and grant licenses (with the right to sublicense) to Third Parties under its interest in such Combined Therapy Inventions and Combined Therapy Patent Rights. The Parties shall agree as to which PartyRecipient, using outside counsel acceptable to both Parties, shall be responsible responsible, at its sole discretion, for preparing and prosecuting Patent applications and maintaining Patents within the Combined Therapy Patent Rights. The Party drafting and prosecuting any Combined Therapy Patent Right (the “Prosecuting Party”) Recipient shall keep the other Party (the “Non-Prosecuting Party”) BMS advised as to material developments and all steps to be taken with respect to prosecuting any such Patents Patent Rights and shall furnish the Non-Prosecuting Party BMS with copies of applications for such PatentsPatent Rights, amendments thereto and other related correspondence to and from Patent patent offices, and permit the Non-Prosecuting Party BMS a reasonable opportunity to review and offer commentscomments prior to submitting such applications and correspondence to the applicable governmental authority (and will take BMS’s comments into account in preparing same). The Non-Prosecuting Party BMS shall reasonably assist and cooperate in obtaining, prosecuting and maintaining the Combined Therapy Patent Rights. Notwithstanding the foregoing, the Prosecuting Party Recipient shall not take any position in a submission to a Patent patent office concerning a Combined Therapy Invention that interprets the scope of a Patent or Patent application Right of the Non-Prosecuting Party BMS without the prior written consent of such Non-Prosecuting PartyBMS. The Prosecuting Party Recipient shall be reimbursed for any costs and expenses incurred in prosecuting Combined Therapy Patent Rights and the subsequent maintenance of Combined Therapy Patent Rights by the Non-Prosecuting Party BMS such that BMS shall be responsible for [*** of such costs and Five Prime shall be responsible for ] percent ([*** ]%) of such costs. From time-to-time, the Recipient shall invoice BMS such amounts and BMS shall pay the Recipient such invoiced amounts within [**] after receipt of an invoice therefor. The Parties shall discuss in good faith the countries in which the Combined Therapy Patent Rights will be filed. In case one of the two Parties decides not to file or maintain a Combined Therapy Patent Right application in a given country (and also elects not to reimburse the other Party for [*** ]) of the costs of prosecution and maintenance of such Combined Therapy Patent Right in such country), the other Party shall have the right to file or file, prosecute and maintain such patent application Combined Therapy Patent Right in such country in its own name and at its own expense upon the prior consent of the other Party, which shall not be unreasonably withheld or delayedexpense. In this case, the Party who decides not to file or maintain (and also decides not to reimburse the other Party for its share of the costs of) a joint application Combined Therapy Patent Right for a given country shall promptly assign its rights to the joint invention Combined Therapy Patent Right in said country to the Party (the “Filing Party”) who wishes to file or maintain said patent applicationCombined Therapy Patent Right in such country and the Filing Party shall grant, and hereby grants, to the other Party an irrevocable, perpetual, fully-paid, non-exclusive license, with the right to grant and authorize sublicenses, under such Combined Therapy Patent Rights to make, have made, use, sell, offer for sale, import and other exploit products and services in such country. The Party who does not wish to file or maintain a patent application Combined Therapy Patent Right in any country shall assist in the timely provision of all documents required under national provisions to register said assignment of rights with the corresponding national authorities at the sole expense expenses of the Party who wishes to file or maintain such patent application Combined Therapy Patent Right in that given country. If the Parties cannot agree with respect to the decision to file or maintain a Combined Therapy Patent Right within [*** INDICATES MATERIAL THAT WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT WAS REQUESTED. ALL SUCH OMITTED MATERIAL WAS FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934] subsequent to the initiation of the Parties’ good faith efforts to resolve any disagreement, AS AMENDED. EXECUTION VERSIONthen either Party shall have the right to file or maintain any Combined Therapy Patent Right in the names of both Parties, provided that: (i) any such Combined Therapy Patent Right shall be jointly owned by the Parties and subject to the freedom to use and operate under such Combined Therapy Patent Right as set forth in the first sentence of this Section 6.1(c); (ii) such prosecuting Party obtains the prior consent of the non-prosecuting Party, which consent shall not be unreasonably withheld or delayed, and (iii) the non-prosecuting party reimburses the prosecuting party for its [**] share of the patent costs.

Combined Therapy Inventions. All Combined Therapy Inventions and Combined Therapy Patent Rights shall be jointly owned by the Parties, and either Party shall have the right to freely exploit the Combined Therapy Inventions and Combined Therapy Patent Rights, both within and outside the scope of this Agreement, without accounting or any other obligation to the other Party (except as expressly set forth in this Section 6.1(c) and Section 6.3(d) with regard to the filing, prosecution, maintenance and enforcement of Combined Therapy Patent Rights) and each Party may use, exploit and grant licenses (with the right to sublicense) to Third Parties under its interest in such Combined Therapy Inventions and Combined Therapy Patent Rights. The Parties shall agree as to which PartyRecipient, using outside counsel acceptable to both Parties, shall be responsible responsible, at its sole discretion, for preparing and prosecuting Patent applications and maintaining Patents within the Combined Therapy Patent Rights. The Party drafting and prosecuting any Combined Therapy Patent Right (the “Prosecuting Party”) Recipient shall keep the other Party (the “Non-Prosecuting Party”) BMS advised as to material developments and all steps to be taken with respect to prosecuting any such Patents Patent Rights and shall furnish the Non-Prosecuting Party BMS with copies of applications for such PatentsPatent Rights, amendments thereto and other related correspondence to and from Patent patent offices, and permit the Non-Prosecuting Party BMS a reasonable opportunity to review and offer commentscomments prior to submitting such applications and correspondence to the applicable governmental authority (and will take BMS’s comments into account in preparing same). The Non-Prosecuting Party BMS shall reasonably assist and cooperate in obtaining, prosecuting and maintaining the Combined Therapy Patent Rights. Notwithstanding the foregoing, the Prosecuting Party Recipient shall not take any position in a submission to a Patent patent office concerning a Combined Therapy Invention that interprets the scope of a Patent or Patent application Right of the Non-Prosecuting Party BMS without the prior written consent of such Non-Prosecuting PartyBMS. The Prosecuting Party Recipient shall be reimbursed for any costs and expenses incurred in prosecuting Combined Therapy Patent Rights and the subsequent maintenance of Combined Therapy Patent Rights by the Non-Prosecuting Party BMS such that BMS shall be responsible for [*** of such costs and Five Prime shall be responsible for ] percent ([*** ]%) of such costs. From time-to-time, the Recipient shall invoice BMS such amounts and BMS shall pay the Recipient such invoiced amounts within [**] after receipt of an invoice therefor. The Parties shall discuss in good faith the countries in which the Combined Therapy Patent Rights will be filed. In case one of the two Parties decides not to file or maintain a Combined Therapy Patent Right application in a given country (and also elects not to reimburse the other Party for [*** ] percent ([**]%) of the costs of prosecution and maintenance of such Combined Therapy Patent Right in such country), the other Party shall have the right to file or file, prosecute and maintain such patent application Combined Therapy Patent Right in such country in its own name and at its own expense upon the prior consent of the other Party, which shall not be unreasonably withheld or delayedexpense. In this case, the Party who decides not to file or maintain (and also decides not to reimburse the other Party for its share of the costs of) a joint application Combined Therapy Patent Right for a given country shall promptly assign its rights to the joint invention Combined Therapy Patent Right in said country to the Party (the “Filing Party”) who wishes to file or maintain said patent applicationCombined Therapy Patent Right in such country and the Filing Party shall grant, and hereby grants, to the other Party an irrevocable, perpetual, fully-paid, non-exclusive license, with the right to grant and authorize sublicenses, under such Combined Therapy Patent Rights to make, have made, use, sell, offer for sale, import and other exploit products and services in such country. The Party who does not wish to file or maintain a patent application Combined Therapy Patent Right in any country shall assist in the timely provision of all documents required under national provisions to register said assignment of rights with the corresponding national authorities at the sole expense expenses of the Party who wishes to file or maintain such patent application Combined Therapy Patent Right in that given country. If the Parties cannot agree with respect to the decision to file or maintain a Combined Therapy Patent Right within [*** INDICATES MATERIAL THAT WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT WAS REQUESTED. ALL SUCH OMITTED MATERIAL WAS FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934] subsequent to the initiation of the Parties’ good faith efforts to resolve any disagreement, AS AMENDED. EXECUTION VERSIONthen either Party shall have the right to file or maintain any Combined Therapy Patent Right in the names of both Parties, provided that: (i) any such Combined Therapy Patent Right shall be jointly owned by the Parties and subject to the freedom to use and operate under such Combined Therapy Patent Right as set forth in the first sentence of this Section 6.1(c); (ii) such prosecuting Party obtains the prior consent of the non-prosecuting Party, which consent shall not be unreasonably withheld or delayed, and (iii) the non-prosecuting party reimburses the prosecuting party for its [**] share of the patent costs.

Combined Therapy Inventions. All Combined Therapy Inventions and Combined Therapy Patent Rights shall be jointly owned by the Parties, and either Party shall have the right to freely exploit the Combined Therapy Inventions and Combined Therapy Patent Rights, both within and outside the scope of this Agreement, without accounting or any other obligation to the other Party (except as expressly set forth in this Section 6.1(c) and Section 6.3(d) with regard to the filing, prosecution, maintenance and enforcement of Combined Therapy Patent Rights) and each Party may use, exploit and grant licenses (with the right to sublicense) to Third Parties under its interest in such Combined Therapy Inventions and Combined Therapy Patent Rights. The Parties shall agree as to which PartyRecipient, using outside counsel acceptable to both Parties, shall be responsible responsible, at its sole discretion, for preparing and prosecuting Patent applications and maintaining Patents within the Combined Therapy Patent Rights. The Party drafting and prosecuting any Combined Therapy Patent Right (the “Prosecuting Party”) Recipient shall keep the other Party (the “Non-Prosecuting Party”) BMS advised as to material developments and all steps to be taken with respect to prosecuting any such Patents Patent Rights and shall furnish the Non-Prosecuting Party BMS with copies of applications for such PatentsPatent Rights, amendments thereto and other related correspondence to and from Patent patent offices, and permit the Non-Prosecuting Party BMS a reasonable opportunity to review and offer commentscomments prior to submitting such applications and correspondence to the applicable governmental authority (and will take BMS’s comments into account in preparing same). The Non-Prosecuting Party BMS shall reasonably assist and cooperate in obtaining, prosecuting and maintaining the Combined Therapy Patent Rights. Notwithstanding the foregoing, the Prosecuting Party shall not take any position in a submission to a Patent office that interprets the scope of a Patent or Patent application of the Non-Prosecuting Party without the prior written consent of such Non-Prosecuting Party. The Prosecuting Party Recipient shall be reimbursed for any costs and expenses incurred in prosecuting Combined Therapy Patent Rights and the subsequent maintenance of Combined Therapy Patent Rights by the Non-Prosecuting Party BMS such that BMS shall be responsible for [*** of ]. From time-to-time, the Recipient shall invoice BMS such costs amounts and Five Prime BMS shall be responsible for pay the Recipient such invoiced amounts within [*** ] after receipt of such costsan invoice therefor. The Parties shall discuss in good faith the countries in which the Combined Therapy Patent Rights will be filed. In case one of the two Parties decides not to file or maintain a Combined Therapy Patent Right application in a given country (and also elects not to reimburse the other Party for [*** of the costs ] of prosecution and maintenance of such Combined Therapy Patent Right in such country), the other Party shall have the right to file or file, prosecute and maintain such patent application Combined Therapy Patent Right in such country in its own name and at its own expense upon the prior consent of the other Party, which shall not be unreasonably withheld or delayedexpense. In this case, the Party who decides not to file or maintain (and also decides not to reimburse the other Party for its share of the costs of) a joint application Combined Therapy Patent Right for a given country shall promptly assign its rights to the joint invention Combined Therapy Patent Right in said country to the Party (the “Filing Party”) who wishes to file or maintain said patent applicationCombined Therapy Patent Right in such country and the Filing Party shall grant, and hereby grants, to the other Party an irrevocable, perpetual, fully-paid, non-exclusive license, with the right to grant and authorize sublicenses, under such Combined Therapy Patent Rights to make, have made, use, sell, offer for sale, import and other exploit products and services in such country. The Party who does not wish to file or maintain a patent application Combined Therapy Patent Right in any country shall assist in the timely provision of all documents required under national provisions to register said assignment of rights with the corresponding national authorities at the sole expense expenses of the Party who wishes to file or maintain such patent application Combined Therapy Patent Right in that given country. If the Parties cannot agree with respect to the decision to file or maintain a Combined Therapy Patent Right within [*** INDICATES MATERIAL THAT WAS OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT WAS REQUESTED] subsequent to the initiation of the Parties’ good faith efforts to resolve any disagreement, then either Party shall have the right to file or maintain any Combined Therapy Patent Right in the names of both Parties, provided that: (i) any such Combined Therapy Patent Right shall be jointly owned by the Parties and subject to the freedom to use and operate under such Combined Therapy Patent Right as set forth in the first sentence of this Section 6.1(c); (ii) such prosecuting Party obtains the prior consent of the non-prosecuting Party, which consent shall not be unreasonably withheld or delayed, and (iii) the non-prosecuting party reimburses the prosecuting party for its [**] of the patent costs. ALL SUCH OMITTED MATERIAL WAS FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934Notwithstanding the foregoing provisions in this Section 6.1(c), AS AMENDED. EXECUTION VERSIONneither Party shall knowingly take any position in a submission to a patent office concerning a Combined Therapy Invention that interprets the scope of a Patent Right of the other Party without the prior written consent of such other Party.