Common use of Invention Disclosure, Election of Title, and Filing of Patent Application Clause in Contracts

Invention Disclosure, Election of Title, and Filing of Patent Application. i. Regeneron shall disclose in writing each Subject Invention to the OTTR within 12 months after the inventor discloses it in writing to Regeneron personnel responsible for patent matters. The disclosure shall identify the inventor(s) and this Project Agreement under which the Subject Invention was made. It shall be sufficiently complete in technical detail to convey a clear understanding of the Subject Invention. The disclosure shall also identify any publication, on sale (i.e., sale or offer for sale), or public use of the Subject Invention, or whether a manuscript describing the Subject Invention has been submitted for publication and, if so, whether it has been accepted for publication. In addition, after disclosure to the Government funding agency (HHS/BARDA), Regeneron shall promptly notify the OTTR of the acceptance of any manuscript describing the Subject Invention for publication and any on sale or public use. ii. Regeneron shall elect in writing whether or not to retain ownership of any Subject Invention by notifying the OTTR within 2 years of disclosure to the Government funding agency. However, in any case where publication, on sale, or public use has initiated the 1-year statutory period during which valid patent protection can be obtained in the United States, the period for election of title may be shortened by the agency to a date that is no more than 60 calendar days prior to the end of the statutory period. iii. Regeneron shall file either a provisional or a non-provisional patent application for an elected Subject Invention within 1 year after election of title. However, in any case where a publication, on sale, or public use has initiated the 1-year statutory period during which valid patent protection can be obtained in the United States, Regeneron shall file the application prior to the end of that statutory period. If Regeneron files an initial provisional application, it shall file a non-provisional application within 10 months of the filing of the initial provisional application. Regeneron shall include a Government Support Clause (GSC) within the specification of any United States patent applications and any patent issuing thereon covering a subject invention. iv. Regeneron may request extensions of time for disclosure, election, or filing under subparagraphs (b)(i), (b)(ii) and (b)(iii) of this clause. An extension of time for each deadline, may be granted at the discretion of the Government funding agency. v. If Regeneron determines that it does not intend to elect to retain title to any such Subject Invention, Regeneron shall notify the Government, in writing, within two (2) years of disclosure to the Government. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by the Government to a date that is no more than sixty (60) calendar days prior to the end of the statutory period.

Invention Disclosure, Election of Title, and Filing of Patent Application. i. Regeneron Subcontractor shall disclose in writing each Subject Invention to the OTTR AstraZeneca within 12 four months after the inventor discloses it in writing to Regeneron his/her company personnel responsible for patent matters. The disclosure to AstraZeneca shall be in the form of a written report and shall identify the the identity of the inventor(s) and this Project Agreement under which the Subject Invention was made). It shall be sufficiently complete in technical detail to convey a clear understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Subject Invention. The disclosure shall also identify any publication, on sale (i.e., sale or offer for sale), or public use of the Subject Invention, or Invention and whether a manuscript describing the Subject Invention has been submitted for publication and, if so, whether it has been accepted for publication. In addition, after disclosure to publication at the Government funding agency (HHS/BARDA), Regeneron shall promptly notify the OTTR time of the acceptance of any manuscript describing the Subject Invention for publication and any on sale or public usedisclosure. ii. Regeneron shall elect in writing whether or not to retain ownership of any Subject Invention by notifying the OTTR within 2 years of disclosure to the Government funding agency. However, in any case where publication, on sale, or public use has initiated the 1-year statutory period during which valid patent protection can be obtained in the United States, the period for election of title may be shortened by the agency to a date that is no more than 60 calendar days prior to the end of the statutory period. iii. Regeneron shall file either a provisional or a non-provisional patent application for an elected Subject Invention within 1 year after election of title. However, in any case where a publication, on sale, or public use has initiated the 1-year statutory period during which valid patent protection can be obtained in the United States, Regeneron shall file the application prior to the end of that statutory period. If Regeneron files an initial provisional application, it shall file a non-provisional application within 10 months of the filing of the initial provisional application. Regeneron shall include a Government Support Clause (GSC) within the specification of any United States patent applications and any patent issuing thereon covering a subject invention. iv. Regeneron may request extensions of time for disclosure, election, or filing under subparagraphs (b)(i), (b)(ii) and (b)(iii) of this clause. An extension of time for each deadline, may be granted at the discretion of the Government funding agency. v. If Regeneron Subcontractor determines that it does not intend to elect to retain title to any such Subject Invention, Regeneron Subcontractor shall notify the GovernmentAstraZeneca, in writing, within two (2) years of disclosure to the GovernmentAstraZeneca. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by AstraZeneca or the Government to a date that is no more than sixty (60) 60 calendar days prior to the end of the statutory period. iii. Subcontractor shall file its initial patent application on a Subject Invention to which it elects to retain title within one year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. Subcontractor may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten months of the corresponding initial patent application or six months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. iv. Requests for extension of the time for disclosure election, and filing under Section 8(B) may, at the discretion of the Government, and after considering the position of Subcontractor, be granted.

Invention Disclosure, Election of Title, and Filing of Patent Application. i. Regeneron 1. Subcontractor shall disclose in writing each Subject Invention to the OTTR BARDA Other Transaction Agreement Technical Representative (“OTTR”) within 12 months after the inventor discloses it in writing to Regeneron Subcontractor personnel responsible for patent matters. The disclosure shall identify the inventor(s) and this Project Agreement the Subcontract under which the Subject Invention was made. It shall be sufficiently complete in technical detail to convey a clear understanding of the Subject Invention. The disclosure shall also identify any publication, on sale (i.e., sale or offer for sale), or public use of the Subject Invention, or whether a manuscript describing the Subject Invention has been submitted for publication and, if so, whether it has been accepted for publication. In addition, after disclosure to the Government funding agency (HHS/BARDA)agency, Regeneron the Subcontractor shall promptly notify the OTTR of the acceptance of any manuscript describing the Subject Invention for publication and any on sale or public use. ii2. Regeneron Subcontractor shall elect in writing whether or not to retain ownership of any Subject Invention by notifying the OTTR within 2 years of disclosure to the Government funding agency. However, in any case where publication, on sale, or public use has initiated the 1-year statutory period during which valid patent protection can be obtained in the United States, the period for election of title may be shortened by the agency to a date that is no more than 60 calendar days prior to the end of the statutory period. iii3. Regeneron Subcontractor shall file either a provisional or a non-provisional patent application for an elected Subject Invention within 1 year after election of titleelection. However, in any case where a publication, on sale, or public use has initiated the 1-year statutory period during which valid patent protection can be obtained in the United States, Regeneron Subcontractor shall file the application prior to the end of that statutory period. If Regeneron Subcontractor files an initial a provisional application, it shall file a non-provisional application within 10 12 months of the filing of the initial provisional application. Regeneron shall include a Government Support Clause (GSC) within the specification of any United States patent applications and any patent issuing thereon covering a subject invention. iv4. Regeneron Subcontractor may request extensions of that the U.S. Government extend the time for disclosure, election, or filing under subparagraphs (b)(iB)((1), (b)(iiB)(2) and (b)(iiiB)(3) of this clause. An extension of time for each deadline, may be granted at the discretion of the Government funding agencySection IV. v. 5. If Regeneron Subcontractor determines that it does not intend to elect to retain title to any such Subject Invention, Regeneron Subcontractor shall notify the U.S. Government, in writing, within two (2) years of disclosure to the U.S. Government. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by the U.S. Government to a date that is no more than sixty (60) calendar days prior to the end of the statutory period.