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 Acuitas elects not (i) to file, prosecute or maintain any LNP Technology Patents 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 (ii) to pay the Patent Costs associated with prosecution or maintenance of any such LNP Technology Patents, then in each such case Acuitas will so notify Omega, promptly in writing and in good time to enable Acuitas to meet any deadlines by which an action must be taken to preserve such LNP Technology Patent in such country, if Omega so requests. Upon receipt of each such notice by Acuitas, Omega will have the right, but not the obligation, to notify Acuitas in writing on a timely basis that Acuitas should continue the prosecution or maintenance of such LNP Technology Patent in the respective country, and thereafter, (x) Acuitas would prosecute and maintain such LNP Technology Patent in such country at the direction and expense of Omega and any other Acuitas Third-Party licensee of such LNP Technology Patent so electing (on a pro rata basis), (y) Acuitas would make available to Omega all documentation and correspondence with respect to such LNP Technology Patent, and (z) Omega’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). Omega is entitled to discontinue the payment of Patent Costs for any LNP Technology Patents at any time, provided that it will so notify Acuitas in writing in time for such discontinuance.

Election Not to Prosecute or Maintain or Pay Patent Costs. (a) If Acuitas Arcturus elects not (i) to file, prosecute or maintain any LNP Arcturus Technology Patents that specifically claim the Licensed Product 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 (ii) to pay the Patent Costs associated with prosecution or maintenance of any such LNP Technology Patents, then in each such case Acuitas Arcturus will so notify OmegaCureVac, promptly in writing and in good time with reasonable notice to enable Acuitas CureVac to meet any deadlines by which an action must be taken to preserve such LNP Arcturus Technology Patent that specifically claim the Licensed Product in such country, if Omega CureVac so requests. Upon receipt of each such notice by AcuitasArcturus, Omega CureVac will have the right, but not the obligation, to notify Acuitas Arcturus in writing on a timely basis that Acuitas Arcturus should continue transfer the prosecution or maintenance of such LNP Arcturus Technology Patents that specifically claim the Licensed Product to CureVac and at CureVac’s sole expense or continue the prosecution and/or maintenance of such Arcturus Technology Patent that specifically claim the Licensed Product in the respective country, and thereafter, (x) Acuitas Arcturus would prosecute and maintain such LNP Arcturus Technology Patent that specifically claim the Licensed Product in such country at the sole direction and expense of Omega and any other Acuitas Third-Party licensee of such LNP Technology Patent so electing (on a pro rata basis)CureVac, (y) Acuitas Arcturus would make available to Omega CureVac all documentation and correspondence with respect to such LNP Arcturus Technology Patent, and (z) Omega. CureVac’s license to such LNP Arcturus Technology Patent under Section 2.1 will automatically become irrevocablebe irrevocable and royalty-free, perpetual, fully paid-up and royalty free but such LNP Arcturus Technology Patent will thereafter no longer be part of the Licensed Arcturus 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)Agreement. Omega CureVac is entitled to discontinue the payment of Patent Costs Cost for any LNP Arcturus Technology Patents that specifically claim the Licensed Product at any time, provided that it will so notify Acuitas Arcturus in writing in time for such discontinuance. (b) If Arcturus elects not to pay its share of the Patent Costs associated with prosecution or maintenance of any Joint Interest Patents, then it shall assign its co-ownership share in such Patents to CureVac and the respective Patent shall no longer be considered a Joint Interest Patent.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Acuitas Bluebird elects not (ia) to file, prosecute Prosecute or maintain Maintain any LNP Technology Patents for which it is responsible under Section 6.1 within the Licensed IP in any particular country before the applicable filing deadline or continue such activities once filed in a particular country, or (iib) to pay the Patent Costs associated with prosecution Prosecution or maintenance Maintenance of any such LNP Technology PatentsPatents within the Licensed IP, then in each such case Acuitas Bluebird will so notify OmegaCelgene, promptly in writing and in good time to enable Acuitas Bluebird to meet any deadlines by which an action must be taken to preserve such LNP Technology Patent in such country, if Omega Celgene so requests. Upon receipt of each such notice by AcuitasBluebird, Omega 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 Acuitas Bluebird in writing on a timely basis that Acuitas should continue Celgene will assume control of the prosecution Prosecution or maintenance Maintenance of such LNP Technology Patent in the respective country, and thereafter, (x) Acuitas would prosecute and maintain such LNP Technology Patent in such country at the direction and expense of Omega and any other Acuitas Third-Party licensee of such LNP Technology Patent so electing (on a pro rata basis), (y) Acuitas would make available to Omega all documentation and correspondence with respect to such LNP Technology 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 (z90th) Omegaday after Bluebird’s license to receipt of such LNP Technology Patent under Section 2.1 will automatically become irrevocable, perpetual, fully paid-up and royalty free but notice such LNP Technology Patent will thereafter no longer be part of licensed to Celgene hereunder and will no longer be included within 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). Omega is entitled to discontinue the payment of Patent Costs for any LNP Technology Patents at any time, provided that it will so notify Acuitas in writing in time for such discontinuanceIP” hereunder.

Election Not to Prosecute or Maintain or Pay Patent Costs. If Acuitas elects not (i) If Tranzyme elects to file, prosecute cease the Prosecution or maintain Maintenance of the last pending member of any LNP Technology family of Exclusive Patents 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, country Covering the composition of matter or (ii) to pay the Patent Costs associated with prosecution use of a Collaboration Lead or maintenance of any such LNP Technology PatentsLicensed Product, then in each such case Acuitas will Tranzyme shall so notify OmegaBMS, promptly in writing and in good sufficient time to enable Acuitas BMS to meet any deadlines by which an action must be taken to preserve such LNP Technology Exclusive Patent in such country, if Omega so requests. Upon receipt of each such notice by AcuitasTranzyme or if, Omega will at any time, Tranzyme fails to initiate any such action within ninety (90) days after a request by BMS that it do so (or within such shorter time as may be required to prevent the forfeiture of rights), BMS shall have the right, but not the obligation, to notify Acuitas Tranzyme in writing on a timely basis that Acuitas should BMS will assume and continue the prosecution Prosecution or maintenance Maintenance of such LNP Technology Exclusive Patent covering the composition of matter or use of a Collaboration Lead or Licensed Product. PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO AN APPLICATION FOR CONFIDENTIAL TREATMENT UNDER RULE 406 OF THE SECURITIES ACT; [***] DENOTES OMISSIONS. (ii) If BMS elects not to pay BMS's share of the Patent Costs associated with Prosecution or Maintenance of any Exclusive Patent, then in each such case BMS shall so notify Tranzyme and on the respective country, and thereafter, ninetieth (x90th) Acuitas would prosecute and maintain such LNP Technology Patent in such country at the direction and expense of Omega and any other Acuitas Third-Party licensee day after Tranzyme's receipt of such LNP Technology notice such Exclusive Patent so electing (on a pro rata basis), (y) Acuitas would make available to Omega all documentation and correspondence with respect to such LNP Technology Patent, and (z) Omega’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 shall no longer be part of the Licensed Technology in such country licensed to BMS hereunder and shall not longer be treated as an "Exclusive Patent" hereunder. BMS shall be required to reimburse Tranzyme 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). Omega is entitled to discontinue the payment of Patent Costs for any LNP Technology Patents at any timesuch Exclusive Patent incurred by Tranzyme through such ninetieth (90th) day, provided that it will so notify Acuitas in writing in time for such discontinuancebut not thereafter.

Election Not to Prosecute or Maintain or Pay Patent Costs. (a) If Acuitas Arcturus elects not (i) to file, prosecute or maintain any LNP Arcturus Technology Patents that specifically claim the Licensed Product 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 (ii) to pay the Patent Costs associated with prosecution or maintenance of any such LNP Technology Patents, then in each such case Acuitas Arcturus will so notify OmegaCureVac, promptly in writing and in good time with reasonable notice to enable Acuitas CureVac to meet any deadlines by which an action must be taken to preserve such LNP Arcturus Technology Patent that specifically claim the Licensed Product in such country, if Omega CureVac so requests. Upon receipt of each such notice by AcuitasArcturus, Omega CureVac will have the right, but not the obligation, to notify Acuitas Arcturus in writing on a timely basis that Acuitas Arcturus should continue transfer the prosecution or maintenance of such LNP Arcturus Technology Patents that specifically claim the Licensed Product to CureVac and at CureVac’s sole expense or continue the prosecution and/or maintenance of such Arcturus Technology Patent that specifically claim the Licensed Product in the respective country, and thereafter, (x) Acuitas Arcturus would prosecute and maintain such LNP Arcturus Technology Patent that specifically claim the Licensed Product in such country at the sole direction and expense of Omega and any other Acuitas Third-Party licensee of such LNP Technology Patent so electing (on a pro rata basis)CureVac, (y) Acuitas Arcturus would make available to Omega CureVac all documentation and correspondence with respect to such LNP Arcturus Technology Patent, and (z) Omega. CureVac’s license to such LNP Arcturus Technology Patent under Section 2.1 will automatically become irrevocablebe irrevocable and royalty-free, perpetual, fully paid-up and royalty free but such LNP Arcturus Technology Patent will thereafter no longer be part of the Licensed Arcturus 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)Agreement. Omega CureVac is entitled to discontinue the payment of Patent Costs for any LNP Arcturus Technology Patents that specifically claim the Licensed Product at any time, provided that it will so notify Acuitas Arcturus in writing in time for such discontinuance. (b) If Arcturus elects not to pay its share of the Patent Costs associated with prosecution or maintenance of any Joint Interest Patents, then it shall assign its co-ownership share in such Patents to CureVac and the respective Patent shall no longer be considered a Joint Interest Patent.