Common use of Conduct of Prosecution Clause in Contracts

Conduct of Prosecution. (a) All costs and expenses of Prosecution (including, for example, maintenance fees, attorney fees, filing fees and translations) under Section 8.3.1, Section 8.3.2 or Section 8.3.3 shall be paid by and are the sole responsibility of the Prosecution Party except as otherwise expressly set forth herein. (b) If the Party with the first right to Prosecute a Patent under Section 8.3.1 or Section 8.3.2 elects not to pursue or continue the Prosecution of such Patent in a particular country, such first Party shall notify the other Party in writing at least [***] in advance of the due date of any payment or other action that is required to Prosecute such Patent, and such other Party may elect, upon written notice to such first Party, to make such payment or take such action, at such other Party’s cost and expense using counsel of its own choice, in the name of the owner of the applicable Patent, and such first Party shall reasonably cooperate with such other Party in connection with such activities. (c) While [***] is the Prosecution Party for any [***] Patents, [***] shall use commercially reasonable efforts to file separately Patents claiming any compound that is or could reasonably be expected to become a Licensed Compound or any product that is or could reasonably be expected to become a Licensed Product. To that end, with respect to any Patent that claims any small molecule antagonist Directed to any (i) Research Target for which AbbVie then has an Option with respect to such Research Target or (ii) ROFN Target for which AbbVie then has a ROFN with respect to such ROFN Target, or any products containing such small molecule antagonist or the Exploitation of such small molecule antagonist or product, [***] shall use, and shall instruct its counsel to use, commercially reasonable efforts not to include in any such Patent any claim(s) that would cause such Patent not to become an Included Target Patent or AbbVie Prosecuted Joint Patent. Without limitation of the foregoing, promptly after the Inclusion Date for a Research Target or a ROFN Target, as applicable, [***] shall take such actions as are necessary or as [***] may reasonably request with respect to any Morphic Patents and Joint Patents, including by filing divisionals, continuations, continuations-in-part or otherwise, so as, to the extent feasible, separate into discrete Patents that specifically claim Licensed Compounds Directed to the applicable Included Target and the corresponding Licensed Products or the Exploitation of such Licensed Compounds or Licensed Products.

Conduct of Prosecution. (a) All costs and expenses of Prosecution (including, for example, maintenance fees, attorney fees, filing fees and translations) under Section 8.3.1, Section 8.3.2 or Section 8.3.3 shall be paid by and are the sole responsibility Subject to any Prior Obligations of the Prosecution Party except as otherwise expressly set forth herein. (b) If Parties, the Party with the first right to Prosecute a Patent under Section 8.3.1 or Section 8.3.2 elects not to pursue or continue the Prosecution of such Patent in a particular country, such first Prosecuting Party shall notify have the other Party in writing at least [***] in advance of initial right, but not the due date of any payment or other action that is required to Prosecute such Patent, and such other Party may elect, upon written notice to such first Partyobligation, to make such payment or take such actiontimely prepare, at such other Party’s cost file, prosecute and expense using counsel of maintain, in the relevant Territory, the Glycoprotein Product-Related Patent Rights as to which it has been designated pursuant to Section 8.2.4.a. (in its own choicename, in the name of the owner other Party or in the name of both Parties, as applicable). The Prosecuting Party shall have the applicable Patentfull authority, subject to the conditions of Sections 8.2.4.c, 8.2.5, and such first 8.2.6, below, to make all decisions, and take all actions, that are necessary to obtain effective protection of said Patent Rights, including, but not limited to, the authority to draft and file appropriate responses, conduct interviews with examining authorities, and to represent either or both Parties in any appeal(s), relating to the prosecution of said Patent Rights. The Prosecuting Party shall require its patent counsel to (a) keep the other Party reasonably cooperate with such informed about prosecution status and strategy, and (b) provide the other Party in connection a timely manner with such activities. (c) While [***] is copies of all official correspondence to and from the Prosecution relevant patent office with respect thereto. The Prosecuting Party shall consider in good faith all comments, suggestions, and proposals by the other Party for any [***] Patentsresponse to communications from the relevant patent office, [***] shall use commercially reasonable efforts should they be provided to file separately Patents claiming the Prosecuting Party in a timely fashion to permit their consideration and incorporation into any compound that is or could reasonably be expected to become a Licensed Compound or any product that is or could reasonably be expected to become a Licensed Product. To that end, with respect to any Patent that claims any small molecule antagonist Directed to any (i) Research Target for which AbbVie then has an Option with respect to such Research Target or (ii) ROFN Target for which AbbVie then has a ROFN with respect to such ROFN Target, or any products containing such small molecule antagonist or the Exploitation of such small molecule antagonist or product, [***] shall useresponse thereto, and the Prosecuting Party shall instruct further require its patent counsel to use, commercially reasonable efforts not timely provide to include in any such Patent any claim(s) that would cause such Patent not to become an Included Target Patent or AbbVie Prosecuted Joint Patent. Without limitation of the foregoing, promptly after the Inclusion Date for a Research Target or a ROFN Target, as applicable, [***] shall take such actions as are necessary or as [***] may reasonably request with respect to any Morphic Patents and Joint Patents, including by filing divisionals, continuations, continuations-in-part or otherwise, so asother Party, to the extent feasiblepossible and practicable, separate into discrete Patents that specifically claim Licensed Compounds Directed drafts of amendments or arguments to the applicable Included Target be made in any such response, prior to filing, and the corresponding Licensed Products Prosecuting shall consider in good faith the comments of the other Party thereon, if timely provided. The Prosecuting Party nonetheless shall have the ultimate authority and discretion to take any action that is necessary to obtain effective protection of said Patent Rights, without consultation with the other Party, if either the other Party has failed to provide its comments and counsel in a timely fashion, or if it is not possible and practicable to consult with the Exploitation of other Party before any such Licensed Compounds or Licensed Productsaction must be taken.