Common use of Filing of Patents Clause in Contracts

Filing of Patents. In consultation with the Patent Coordinators, the JSC will coordinate the determination of what patents will be filed on Technology developed under the R & D Program and make a recommendation to WYETH-AYERST. WYETH-AYERST will then determine the countries in which such patent applications will be filed and shall be responsible for the filing, prosecution, and maintenance (including the defense of interferences and similar proceedings) of such patent applications, provided that SIGA shall have the opportunity to provide substantive review and comment on any such prosecution. If WYETH-AYERST decides not to file a patent application on any such Technology in any country, it shall promptly notify SIGA of such decision at least 90 days prior to the applicable bar date for such patent application. In such event SIGA shall have the right to file a patent application, and WYETH-AYERST shall not have any rights in or to such patent application or any resulting patent in any such country. Responsibility for filing, prosecution, and maintenance of patents (including the defense of interferences and similar proceedings) on Joint Technology will be agreed upon by the parties on a case-by-case basis and handled by mutually acceptable outside patent counsel charged with the duty to act in the best interests of both parties. WYETH-AYERST will bear the costs of the filing, prosecution and maintenance of all patents filed pursuant to this Agreement, unless such patent application is filed by SIGA, in which case the prosecution and maintenance will be at SIGA's expense. The parties shall cooperate with each other in gaining patent term restoration or similar extensions or continuations of rights under Patent Rights. Each party shall also promptly give notice to the other of the grant, lapse, revocation, surrender, invalidation or abandonment of any Patent Rights for which it has responsibility. If at any time, either party wishes to discontinue the prosecution or maintenance of any Patent Rights for which it has responsibility, such party shall promptly give notice of such intention to the other party. The party receiving such notice shall have the right, but not the obligation, to assume responsibility for the prosecution or continued maintenance of any such Patent Right by giving return notice to the party wishing to discontinue same within thirty (30) days.

Filing of Patents. In consultation with (a) Subject to the provisions of this Section 8.6, the Party owning the Patent Coordinators, Rights shall have the JSC will coordinate right and the determination of what patents will be filed on Technology developed under the R & D Program and make a recommendation to WYETH-AYERST. WYETH-AYERST will then determine the countries in which such responsibility for patent applications will be filed and shall be responsible for the filing, prosecution, prosecution and maintenance (including the defense of interferences interferences, oppositions and similar proceedings) (collectively, “Patent Activities”). Such Patent Activities shall be at the discretion and at the sole expense of the applicable owner, using patent counsel of such patent applicationsowner’s choice. (b) Each Party shall notify the other, provided that SIGA shall have the opportunity in writing prior to provide substantive review and comment on any such prosecution. If WYETH-AYERST decides not filing, of its intention to file a any patent application on any such Technology claiming an invention made in any countryconnection with the Research Program and the ownership of which is governed by Sections 8.2(c), it shall promptly notify SIGA 8.2(d), or 8.2(e) above, including identification of such decision at least 90 days prior to each country and regional patent office in which the applicable bar date for such patent application. In such event SIGA shall have the right Party intends to file a patent applications claiming priority to an earlier filed patent application, and WYETH-AYERST shall not have any rights in or to such at the request of the other Party promptly provide the other with copies of all patent application or any resulting patent in any such country. Responsibility for filing, prosecution, prosecution and maintenance of patents (including documentation and correspondence so that the defense of interferences other shall be currently and similar proceedings) on Joint Technology will be agreed upon by the parties on a case-by-case basis and handled by mutually acceptable outside patent counsel charged with the duty to act in the best interests of both parties. WYETH-AYERST will bear the costs promptly informed of the filing, continuing prosecution and maintenance of all patent applications and patents filed pursuant to this Agreement, unless such patent application is filed by SIGA, claiming or disclosing inventions made in which case connection with the prosecution and maintenance will be at SIGA's expenseResearch Program. The parties shall cooperate with Parties will provide reasonable cooperation to each other with respect to each other’s Patent Activities, provided that neither Party shall have any obligation to incur out of pocket expenses or to engage in gaining patent term restoration any legal or similar extensions or continuations of rights under Patent Rights. Each party shall also promptly give notice to the other of the grant, lapse, revocation, surrender, invalidation or abandonment of any Patent Rights for which it has responsibility. administrative proceedings in providing such cooperation. (c) If at any time, either party time the Party responsible for Patent Activities pursuant to Section 8.6(a) above (the “Responsible Party”) does not wish to file or wishes to discontinue the prosecution or maintenance of any patent application or patent filed in any country, on a country-by-country basis, which is included in the Patent Rights for which Rights, it has responsibility, such party shall promptly give notice of such intention to the other partyParty. The party receiving If such notice other Party then has an exclusive license under such patent application or patent pursuant to this Agreement or the License Agreement, then such other Party shall have the right, but not the obligation, to assume responsibility for the prosecution or continued maintenance of any such Patent Right Rights in the applicable country, at its own expense, by giving return notice to the party wishing to discontinue same Responsible Party of such intention within thirty (30) days. In such event, the Responsible Party shall assign all of its rights in such Patent Rights to the Party assuming responsibility for and costs of the Patent Activities for use only in the Syngenta Exclusive Field if the assignee is Syngenta and for use only outside the Syngenta Exclusive Field if the assignee is Diversa. (d) Each Party agrees to cooperate fully in the preparation, filing, and prosecution of any Patent Rights under this Agreement, including, without limitation, executing all papers and instruments, or requiring its employees or consultants, to execute such papers and instruments as may be reasonably required, so as to effectuate the ownership of Research Results, Patent Rights and Know-How set forth in Sections 8.1 and 8.2 and to enable the other Party to apply for and to prosecute patent applications in any country. The Parties agree to follow the patent strategy cooperation procedures set forth in Exhibit C hereto.