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 Verve, 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 Verve so requests. Upon receipt of each such notice by Acuitas, Verve will have the right, but not the obligation, to notify Acuitas in writing on a timely basis that Acuitas should continue the 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 (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 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. If Acuitas Xxxxx elects not (i) to file, prosecute Prosecute or maintain Maintain any LNP Technology Patents for which it is responsible under Section 6.1 Subject Patent 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 Prosecution or maintenance Maintenance of any such LNP Technology PatentsSubject Patent, then in each such case Acuitas Xxxxx will so notify VerveClovis, promptly in writing and in good time to enable Acuitas Xxxxx to meet any deadlines by which an action must be taken to preserve such LNP Technology Subject Patent in such country, if Verve Clovis so requests. Upon receipt of each such notice by AcuitasXxxxx, Verve Xxxxxx will have the right, but not the obligation, to notify Acuitas Xxxxx in writing on a timely basis that Acuitas Xxxxx should continue the prosecution and/or maintenance Prosecution or Maintenance of such LNP Technology Subject Patent in on the respective countryterms set forth above, and thereafterClovis will reimburse Xxxxx for all Patent Costs thereafter incurred by Xxxxx with respect thereto within thirty (30) days of receiving an invoice therefor. If after making such election, Clovis elects not to pay the Patent Costs associated with Prosecution or Maintenance of any Subject Patent, then in each such case Clovis will so notify Xxxxx and on the ninetieth (a90th) 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 day after Xxxxx’x receipt 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 notice such LNP Technology Patent, and (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 Subject 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 licensed to Clovis hereunder and will not longer be considered treated as a “Subject Patent” hereunder. Clovis will be required to reimburse Xxxxx for purposes of determining whether a Valid Claim exists in a particular country). Verve is entitled to discontinue the payment of Patent Costs for any LNP Technology Patents at any timesuch Subject Patent incurred by Xxxxx 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. If Acuitas Subject to Section 13.5, if a Party elects not (i) to file, prosecute Prosecute or maintain Maintain any LNP Technology Patents for which it is responsible under Section 6.1 within its respective Licensed IP 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 Prosecution or maintenance Maintenance of any such LNP Technology PatentsPatents within the Licensed IP as required by Section 13.1, then in each such case Acuitas such first CONFIDENTIAL TREATMENT REQUESTED BY BLUEBIRD BIO, INC. [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24b-2 PROMULGATED UNDER THE SECURITIES ACT OF 1934, AS AMENDED Party will so notify Vervethe other Party, 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 countrycountry to be met, if Verve so requestsin [***]. Upon receipt of each such notice by Acuitassuch first Party, Verve such other Party will have the right, but not the obligation, to notify Acuitas such first Party in writing on a timely basis that Acuitas should such other Party will continue the prosecution and/or maintenance Prosecution or Maintenance of such LNP Technology 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 respective countryProsecution or Maintenance of such Patent within the Bluebird Licensed IP, and thereafterbear 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, (aii) Acuitas would prosecute comment substantively on the Prosecution and maintain such LNP Technology Patent in such country at the direction and expense of Verve and any other Acuitas Third-Party licensee Maintenance of such LNP Technology 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 so electing (on a pro rata basis), (b) Acuitas would make available to Verve all documentation and correspondence Costs associated with respect to Prosecution or Maintenance of any such LNP Technology Patent, then in each such case Celgene will so notify Bluebird and on the ninetieth (c90th) Verveday 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 “Bluebird 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 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) 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 VerveOmega, 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 Verve Omega so requests. Upon receipt of each such notice by Acuitas, Verve Omega will have the right, but not the obligation, to notify Acuitas in writing on a timely basis that Acuitas should continue the prosecution and/or or maintenance of such LNP Technology Patent in the respective country, and thereafter, (ax) Acuitas would prosecute and maintain such LNP Technology Patent in such country at the direction and expense of Verve Omega and any other Acuitas Third-Party licensee of such LNP Technology Patent so electing (on a pro rata basis), (by) Acuitas would make available to Verve Omega all documentation and correspondence with respect to such LNP Technology Patent, and (cz) VerveOmega’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 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. 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 VerveGreenLight, promptly in writing and in good sufficient 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 Verve GreenLight so requests. Upon receipt of each such notice by Acuitas, Verve GreenLight will have the right, but not the obligation, to notify Acuitas in writing on a timely basis that Acuitas should continue the 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 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 Verve GreenLight all documentation and correspondence with respect to such LNP Technology Patent, and (c) VerveGreenLight’s license 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). Verve GreenLight 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.