Common use of Election Not to Prosecute or Maintain or Pay Patent Costs Clause in Contracts

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird elects not (a) to Prosecute or Maintain any Patents within the Licensed IP in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (b) to pay the Patent Costs associated with Prosecution or Maintenance of any Patents within the Licensed IP, then in each such case Bluebird will so notify Celgene, promptly in writing and in good time to enable Bluebird to meet any deadlines by which an action must be taken to preserve such Patent in such country, if Celgene so requests. Upon receipt of each such notice by Bluebird, Celgene will have the right, but not the obligation, to notify Bluebird in writing on a timely basis that Celgene will assume control of the Prosecution or Maintenance of such Patent, and bear the Patent Costs thereafter incurred by Celgene with respect thereto. In addition, Celgene will provide Bluebird and its counsel with an opportunity to consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counsel. If after making such election, Celgene elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Patent, then in each such case Celgene will so notify Bluebird and on the ninetieth (90th) day after Bluebird’s receipt of such notice such Patent will no longer be licensed to Celgene hereunder and will no longer be included within the “Licensed IP” hereunder.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird a Party elects not (ai) to Prosecute or Maintain any Patents within the its respective Licensed IP in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (bii) to pay the Patent Costs associated with Prosecution or Maintenance of any Patents within the Licensed IPIP as required by Section 13.1, then in each such case Bluebird such first Party will so notify Celgenethe other Party, promptly in writing and in good time to enable Bluebird to meet any deadlines by which an action must be taken to preserve such Patent in such country, if Celgene so requestscountry to be met. Upon receipt of each such notice by such first Party, such other Party will have the right, but not the obligation, to notify such first Party in writing on a timely basis that such other Party will continue the Prosecution or Maintenance of such Patent on terms the Parties shall mutually agree; it being understood that only U.S. Patents controlled by Celgene will be subject to this sentence. Notwithstanding the foregoing, upon receipt of each such notice by Bluebird, Celgene will have the right, but not the obligation, to notify Bluebird in writing on a timely basis that Celgene will assume control of the Prosecution or Maintenance of such PatentPatent within the Bluebird Licensed IP, and bear the Patent Costs thereafter incurred by Celgene with respect thereto. In addition, Celgene will provide Bluebird and its counsel with an opportunity to consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counsel. If after making such election, Celgene elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Patent, then in each such case Celgene will so notify Bluebird and on the ninetieth (90th) day after Bluebird’s receipt of such notice such Patent will no longer be licensed to Celgene hereunder and will no longer be included within the “Bluebird Licensed IP” hereunder.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird elects not (ai) to Prosecute or Maintain any Patents within the Licensed IP in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (bii) to pay the Patent Costs associated with Prosecution or Maintenance of any Patents within the Licensed IP, then in each such case Bluebird will so notify Celgene, promptly in writing and in good time to enable Bluebird to meet any deadlines by which an action must be taken to preserve such Patent in such country, if Celgene so requests. Upon receipt of each such notice by Bluebird, Celgene will have the right, but not the obligation, to notify Bluebird in writing on a timely basis that Celgene will assume control of the Prosecution or Maintenance of such Patent, and bear the Patent Costs thereafter incurred by Celgene with respect thereto. In addition, Celgene will provide Bluebird and its counsel with an opportunity to consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counsel. If after making such election, Celgene elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Patent, then in each such case Celgene will so notify Bluebird and on the ninetieth (90th) day after Bluebird’s receipt of such notice such Patent will no longer be licensed to Celgene hereunder and will no longer be included within the “Licensed IP” hereunder.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird Subject to Section 13.5, if a Party elects not (ai) to Prosecute or Maintain any Patents within the its respective Licensed IP in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (bii) to pay the Patent Costs associated with Prosecution or Maintenance of any Patents within the Licensed IPIP as required by Section 13.1, then in each such case Bluebird such first Party will so notify Celgenethe other Party, promptly in writing and in good time to enable Bluebird to meet any deadlines by which an action must be taken to preserve such Patent in such countrycountry to be met, if Celgene so requestsin [***]. Upon receipt of each such notice by such first Party, such other Party will have the right, but not the obligation, to notify such first Party in writing on a timely basis that such other Party will continue the Prosecution or Maintenance of such Patent on terms the Parties shall mutually agree; it being understood that only U.S. Patents controlled by Celgene will be subject to this sentence. Notwithstanding the foregoing, upon receipt of each such notice by Bluebird, Celgene will have the right, but not the obligation, to notify Bluebird in writing on a timely basis that Celgene will assume control of the Prosecution or Maintenance of such PatentPatent within the Bluebird Licensed IP, and bear the Patent Costs thereafter incurred by Celgene with respect thereto. In addition, Celgene will provide Bluebird and its counsel with an opportunity to (i) consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, (ii) comment substantively on the Prosecution and Maintenance of such Patents prior to taking any material action, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counsel. If after making such election, Celgene elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Patent, then in each such case Celgene will so notify Bluebird and on the ninetieth (90th) day after Bluebird’s receipt of such notice such Patent will no longer be licensed to Celgene hereunder and will no longer be included within the “Bluebird Licensed IP” hereunder.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird Xxxxx elects not (ai) to Prosecute or Maintain any Patents within the Licensed IP Subject Patent in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (bii) to pay the Patent Costs associated with Prosecution or Maintenance of any Patents within the Licensed IPSubject Patent, then in each such case Bluebird Xxxxx will so notify CelgeneClovis, promptly in writing and in good time to enable Bluebird Xxxxx to meet any deadlines by which an action must be taken to preserve such Subject Patent in such country, if Celgene Clovis so requests. Upon receipt of each such notice by BluebirdXxxxx, Celgene Xxxxxx will have the right, but not the obligation, to notify Bluebird Xxxxx in writing on a timely basis that Celgene will assume control of Xxxxx should continue the Prosecution or Maintenance of such PatentSubject Patent on the terms set forth above, and bear the Clovis will reimburse Xxxxx for all Patent Costs thereafter incurred by Celgene Xxxxx with respect thereto. In addition, Celgene will provide Bluebird and its counsel with thereto within thirty (30) days of receiving an opportunity to consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counselinvoice therefor. If after making such election, Celgene Clovis elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Subject Patent, then in each such case Celgene Clovis will so notify Bluebird Xxxxx and on the ninetieth (90th) day after Bluebird’s Xxxxx’x receipt of such notice such Subject Patent will no longer be licensed to Celgene Clovis hereunder and will no not longer be included within the treated as a “Licensed IPSubject Patent” hereunder. Clovis will be required to reimburse Xxxxx for Patent Costs for such Subject Patent incurred by Xxxxx through such ninetieth (90th) day, but not thereafter.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird Acuitas elects not (ai) to Prosecute file, prosecute or Maintain maintain any LNP Technology Patents within the Licensed IP for which it is responsible under Section 6.1 in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (bii) to pay the Patent Costs associated with Prosecution prosecution or Maintenance maintenance of any Patents within the Licensed IPsuch LNP Technology Patents, then in each such case Bluebird Acuitas will so notify CelgeneVerve, promptly in writing and in good time to enable Bluebird Acuitas to meet any deadlines by which an action must be taken to preserve such LNP Technology Patent in such country, if Celgene Verve so requests. Upon receipt of each such notice by BluebirdAcuitas, Celgene Verve will have the right, but not the obligation, to notify Bluebird Acuitas in writing on a timely basis that Celgene will assume control of Acuitas should continue the Prosecution or Maintenance prosecution and/or maintenance of such LNP Technology Patent in the respective country, and thereafter, (a) Acuitas would prosecute and maintain such LNP Technology Patent in such country at the direction and expense of Verve and any other Acuitas Third-Party licensee of such LNP Technology Patent so electing (on a pro rata basis), (b) Acuitas would make available to Verve all documentation and correspondence with respect to such LNP Technology Patent, and bear (c) Verve’s license to such LNP Technology Patent under Section 2.1 will automatically become irrevocable, perpetual, fully paid-up and royalty free but such LNP Technology Patent will thereafter no longer be part of the Licensed Technology in such country for all other purposes of this License Agreement (e.g., such LNP Technology Patent will not be considered for purposes of determining whether a Valid Claim exists in a particular country). Verve is entitled to discontinue the payment of Patent Costs thereafter incurred by Celgene with respect thereto. In additionfor any LNP Technology Patents at any time, Celgene will provide Bluebird and its counsel with an opportunity to consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counsel. If after making such election, Celgene elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Patent, then in each such case Celgene provided that it will so notify Bluebird and on the ninetieth (90th) day after Bluebird’s receipt of Acuitas in writing in time for such notice such Patent will no longer be licensed to Celgene hereunder and will no longer be included within the “Licensed IP” hereunderdiscontinuance.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird Acuitas elects not (ai) to Prosecute file, prosecute or Maintain maintain any LNP Technology Patents within the Licensed IP for which it is responsible under Section 6.1 in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (bii) to pay the Patent Costs associated with Prosecution prosecution or Maintenance maintenance of any Patents within the Licensed IPsuch LNP Technology Patents, then in each such case Bluebird Acuitas will so notify CelgeneGreenLight, promptly in writing and in good sufficient time to enable Bluebird Acuitas to meet any deadlines by which an action must be taken to preserve such LNP Technology Patent in such country, if Celgene GreenLight so requests. Upon receipt of each such notice by BluebirdAcuitas, Celgene GreenLight will have the right, but not the obligation, to notify Bluebird Acuitas in writing on a timely basis that Celgene will assume control of Acuitas should continue the Prosecution or Maintenance prosecution and/or maintenance of such LNP Technology Patent in the respective country, and thereafter, (a) Acuitas would prosecute and maintain such LNP Technology Patent in such country at the direction and expense of GreenLight and any other Acuitas Third-Party licensee of such LNP Technology Patent so electing (on a pro rata basis), (b) Acuitas would make available to GreenLight all documentation and correspondence with respect to such LNP Technology Patent, and bear (c) GreenLight’s licenses to such LNP Technology Patent under Section 2.1 will automatically become irrevocable, perpetual, fully paid-up and royalty free but such LNP Technology Patent will thereafter no longer be part of the Licensed Technology in such country for all other purposes of this License Agreement (e.g., such LNP Technology Patent will not be considered for purposes of determining whether a Valid Claim exists in a particular country). GreenLight is entitled to discontinue the payment of Patent Costs thereafter incurred by Celgene with respect thereto. In additionfor any LNP Technology Patents at any time, Celgene will provide Bluebird and its counsel with an opportunity to consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counsel. If after making such election, Celgene elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Patent, then in each such case Celgene provided that it will so notify Bluebird and on the ninetieth (90th) day after Bluebird’s receipt of Acuitas in writing in time for such notice such Patent will no longer be licensed to Celgene hereunder and will no longer be included within the “Licensed IP” hereunderdiscontinuance.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Bluebird elects not (a) to Prosecute or Maintain any Patents within the Licensed IP in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (b) to pay the Patent Costs associated with Prosecution or Maintenance of any Patents within the Licensed IP, then in each such case Bluebird will so notify Celgene, promptly in writing and in good time to enable Bluebird to meet any deadlines by which an action must be taken to preserve such Patent in such country, if Celgene so requests. Upon receipt of each such notice by Bluebird, CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Celgene will have the right, but not the obligation, to notify Bluebird in writing on a timely basis that Celgene will assume control of the Prosecution or Maintenance of such Patent, and bear the Patent Costs thereafter incurred by Celgene with respect thereto. In addition, Celgene will provide Bluebird and its counsel with an opportunity to consult with Celgene and its counsel regarding Prosecution and Maintenance of any such Patents, and Celgene will include or reflect all reasonable comments timely made by Bluebird and its counsel. If after making such election, Celgene elects not to pay the Patent Costs associated with Prosecution or Maintenance of any such Patent, then in each such case Celgene will so notify Bluebird and on the ninetieth (90th) day after Bluebird’s receipt of such notice such Patent will no longer be licensed to Celgene hereunder and will no longer be included within the “Licensed IP” hereunder.