Common use of Election Not to File, Prosecute or Maintain Clause in Contracts

Election Not to File, Prosecute or Maintain. If the responsible Party under this Section 10.5 elects (a) not to file a patent application claiming any Program Technology in a particular country, or (b) to discontinue prosecution or maintenance of any Patent Right with respect to Program Technology controlled by such Party, that Party (the “Initial Responsible Party”) shall give [***] advance written notice to the other Party of any decision to cease preparation, filing, prosecution and maintenance of that Patent Right (a “Discontinued Patent”); provided, however, that abandonment of a patent application in favor of a continuation or a continuation-in-part thereof shall not constitute discontinuance of the patent application. In such case, the other Party may elect at its sole discretion to continue preparation, filing, prosecution or maintenance of the Discontinued Patent at its sole expense. The Party so continuing shall own any such patent application and patents maturing therefrom and be solely responsible for all costs, and the Initial Responsible Party shall have a non-exclusive, worldwide, irrevocable, perpetual, fully-paid license to continue to practice such Discontinued Patent, including the right to sublicense, as provided under this Agreement. In addition, such Party so continuing shall cease to have any obligation to pay royalties to the Initial Responsible Party under this Agreement with respect to the Discontinued Patent. The Initial Responsible Party shall execute such documents and perform such acts as may be reasonably necessary for the other Party to file or to continue prosecution or maintenance, including assigning ownership of such patents and inventions to such electing Party. Discontinuance may be on a country-by-country basis or for a patent application or patent series in total.

Election Not to File, Prosecute or Maintain. If the responsible Party under this Section 10.5 12.3 elects (a) not to file a patent application claiming any Program Technology an invention made in the course of the Collaboration in a particular country, or (b) to discontinue prosecution or maintenance of any Patent Right with respect to Program Technology controlled Controlled by such PartyParty Covering a Product being developed or commercialized by the other Party hereunder or of any Collaboration Patent Right, that Party (the “"Initial Responsible Party”") shall give [***] thirty (30) days advance written notice to the other Party of any decision to cease preparation, filing, prosecution and maintenance of that Patent Right (a “"Discontinued Patent”"); provided, however, that abandonment of a patent application in favor of a continuation or a continuation-in-part thereof shall not constitute discontinuance of the patent application. In such case, the other Party may elect at its sole discretion to continue preparation, filing, prosecution or maintenance of the Discontinued Patent at its sole expense. The Party so continuing shall own any such patent application and patents maturing therefrom and be solely responsible for all costs, and the Initial Responsible Party shall have a non-exclusive, worldwide, irrevocable, perpetual, fully-paid license to continue to practice such Discontinued Patent, including the right to sublicensesublicense solely in connection with the grant of a license to develop, as provided under this Agreementmake, use, import, offer for sale and sell a product of the Initial Responsible Party. In addition, such Party so continuing shall cease to have any obligation to pay royalties to the Initial Responsible Party under this Agreement with respect to the Discontinued Patent. The Initial Responsible Party shall execute such documents and perform such acts as may be reasonably necessary for the other Party to file or to continue prosecution or maintenance, including assigning ownership of such patents and inventions to such electing Party. Discontinuance may be on a country-by-country basis or for a patent application or patent series in total.

Election Not to File, Prosecute or Maintain. If the responsible Party under this Section 10.5 12.3 elects (a) not to file a patent application claiming any Program Technology an invention made in the course of the Collaboration in a particular country, or (b) to discontinue prosecution or maintenance of any Patent Right in a particular country that is (i) Controlled by such Party Covering a Product being developed or commercialized by the other Party hereunder or (ii) of any Collaboration Patent Right or (iii) with respect to Program Technology controlled by such PartyLilly, an Isis Collaboration ASO Compound Patent Right or Isis ASO Compound Patent Right for which Lilly assumes responsibility for filing, prosecution and maintenance under Section 12.3.1 that Party (the “Initial Responsible Party”) shall give [***] thirty (30) days advance written notice to the other Party of any decision to cease preparation, filing, prosecution and maintenance of that Patent Right (a “Discontinued Patent”); provided, however, that abandonment of a patent application in favor of a continuation or a continuation-in-part thereof shall not constitute discontinuance of the patent application. In such case, the other Party may elect at its sole discretion to continue preparation, filing, prosecution or maintenance of the Discontinued Patent at its sole expense. The Party so continuing shall own any such patent application and patents maturing therefrom and be solely responsible for all costs, and the Initial Responsible Party shall have a non-exclusive, worldwide, irrevocable, perpetual, fully-paid license to continue to practice such Discontinued Patent, including the right to sublicensesublicense solely in connection with the grant of a license to develop, as provided make, use, import, offer for sale and sell a product of the Initial Responsible Party; provided, however, with respect to an Isis Collaboration ASO Compound Patent Right or Isis ASO Compound Patent Right for which Lilly assumes responsibility for filing, prosecution and maintenance under Section 12.3.1 that becomes a Discontinued Patent under this AgreementSection 12.4, the license granted under this Agreement with respect to each such Discontinued Patent shall terminate on the date of receipt of such written notification from Lilly and Lilly shall cease to have any obligation to pay royalties to Isis under this Agreement with respect to such Discontinued Patent. In addition, such Party so continuing shall cease to have any obligation to pay royalties to the Initial Responsible Party under this Agreement with respect to the Discontinued Patent. The Initial Responsible Party shall execute such documents and perform such acts as may be reasonably necessary for the other Party to file or to continue prosecution or maintenance, including assigning ownership of such patents and inventions to such electing Party. Discontinuance may be on a country-by-country basis or for a patent application or patent series in total.