Common use of Joint Collaboration IP Clause in Contracts

Joint Collaboration IP. (a) [***] shall have the first right to, at [***] discretion, file, prosecute and maintain (including the defense of any interference or opposition proceedings), all Patent Rights comprising Joint Collaboration IP, in the names of both Alnylam and Genzyme, at [***] sole cost and expense. [***] shall consult with [***] on the filing, prosecution and maintenance of all such Patent Rights. Each Party shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute patent applications or to obtain or maintain patents in respect of such Joint Collaboration IP, at its own cost. (b) [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of documents received from outside counsel in the course of such filing, prosecution or maintenance of Joint Collaboration IP and/or copies of documents relevant to such preparation, filing, prosecution, and maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by [***] and shall consider in good faith timely comments from [***] thereon. [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of such documents as filed in the relevant patent offices. (c) In the event that [***] elects not to file or continue to prosecute or maintain patent protection on any Joint Collaboration IP, [***] shall have the right (but not the obligation) to file, prosecute and maintain Patent Rights comprising Joint Collaboration IP in the names of both Alnylam and Genzyme at [***] sole cost and expense. If [***] exercises such right, [***] shall make available to ACTIVE/100404760.2 [***] its authorized attorneys, agents or representatives, and such of its employees as are reasonably necessary to assist [***] in obtaining and maintaining the patent protection described under this Section 10.3.3(c). [***] shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute such patent applications or to obtain or maintain such patents.

Joint Collaboration IP. (a) [***] shall have the first right to, at [***] discretion, file, prosecute and maintain (including the defense of any interference or opposition proceedings), all Patent Rights comprising Joint Collaboration IP, in the names of both Alnylam and Genzyme, at [***] sole cost and expense. [***] shall consult with [***] on the filing, prosecution and maintenance of all such Patent Rights. Each Party shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute patent applications or to obtain or maintain patents in respect of such Joint Collaboration IP, at its own cost. (b) [***] shall furnish to [***] ], via electronic mail or such other such method as mutually agreed by the Parties Parties, copies of documents received from outside counsel in the course of such filing, prosecution or maintenance of Joint Collaboration IP and/or copies of documents relevant to such preparation, filing, prosecution, and maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by [***] and shall consider in good faith timely comments from [***] thereon. [***] shall furnish to [***] Genzyme, via electronic mail or such other such method as mutually agreed by the Parties Parties, copies of such documents as filed in the relevant patent offices. (c) In the event that [***] elects not to file or continue to prosecute or maintain patent protection on any Joint Collaboration IP, [***] ]shall have the right (but not the obligation) to file, prosecute and maintain Patent Rights comprising Joint Collaboration IP in the names of both Alnylam and Genzyme at [***] sole cost and expenseGenzyme. If [***] exercises such right, [***] shall use Commercially Reasonable Efforts to make available to ACTIVE/100404760.2 [***] its authorized attorneys, agents or representatives, and and/or such of its employees as are reasonably necessary to assist [***] in obtaining and maintaining the patent protection described under this Section 10.3.3(c9.3.4(c). [***] shall sign, sign or use Commercially Reasonable Efforts to have signed, signed all legal documents as are reasonably necessary to file and prosecute such patent applications or to obtain or maintain such patents. (d) The Parties shall share equally the out-of-pocket patent filing, prosecution and maintenance expenses incurred with respect to Patent Rights comprising Joint Collaboration IP.

Joint Collaboration IP. (a) [***] shall have the first right to, at [***] discretion, file, prosecute and maintain (including the defense of any interference or opposition proceedings), all Patent Rights comprising Joint Collaboration IP, in the names of both Alnylam and Genzyme, at . CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***] sole cost and expense]”. 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 UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. GLOBAL LICENSE TERMS [***] shall consult with [***] on the filing, prosecution and maintenance of all such Patent Rights. Each Party shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute patent applications or to obtain or maintain patents in respect of such Joint Collaboration IP, at its own cost. (b) [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of documents received from outside counsel in the course of such filing, prosecution or maintenance of Joint Collaboration IP and/or copies of documents relevant to such preparation, filing, prosecution, and maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by [***] and shall consider in good faith timely comments from [***] thereon. [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of such documents as filed in the relevant patent offices. (c) In the event that [***] elects not to file or continue to prosecute or maintain patent protection on any Joint Collaboration IP, [***] Alnylam shall have the right (but not the obligation) to file, prosecute and maintain Patent Rights comprising Joint Collaboration IP in the names of both Alnylam and Genzyme at [***] sole cost and expense. If [***] exercises such right, [***] shall make available to ACTIVE/100404760.2 [***] its authorized attorneys, agents or representatives, and such of its employees as are reasonably necessary to assist [***] in obtaining and maintaining the patent protection described under this Section 10.3.3(c10.3.4(c). [***] shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute such patent applications or to obtain or maintain such patents. (d) [***] shall bear all out-of-pocket patent filing, prosecution and maintenance expenses incurred with respect to Patent Rights comprising Joint Collaboration IP.

Joint Collaboration IP. (a) [***] ]shall have the first right to, at [***] ]discretion, file, prosecute and maintain (including the defense of any interference or opposition proceedings), all Patent Rights comprising Joint Collaboration IP, in the names of both Alnylam and Genzyme, at [***] sole cost and expense. [***] ]shall consult with [***] on the filing, prosecution and maintenance of all such Patent Rights. Each Party shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute patent applications or to obtain or maintain patents in respect of such Joint Collaboration IP, at its own cost. (b) [***] shall furnish to [***] ], via electronic mail or such other such method as mutually agreed by the Parties Parties, copies of documents received from outside counsel in the course of such filing, prosecution or maintenance of Joint Collaboration IP and/or copies of documents relevant to such preparation, filing, prosecution, and maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by [***] and shall consider in good faith timely comments from [***] thereon. Alnylam shall furnish to[***] shall furnish to [***] ], via electronic mail or such other such method as mutually agreed by the Parties Parties, copies of such documents as filed in the relevant patent offices.. 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 UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. CO-CO LICENSE TERMS (c) In the event that [***] elects not to file or continue to prosecute or maintain patent protection on any Joint Collaboration IP, [***] shall have the right (but not the obligation) to file, prosecute and maintain Patent Rights comprising Joint Collaboration IP in the names of both Alnylam and Genzyme at [***] sole cost and expenseGenzyme. If [***] Genzyme exercises such right, [***] shall use Commercially Reasonable Efforts to make available to ACTIVE/100404760.2 [***] its authorized attorneys, agents or representatives, and and/or such of its employees as are reasonably necessary to assist [***] in obtaining and maintaining the patent protection described under this Section 10.3.3(c11.3.4(c). [***] shall sign, sign or use Commercially Reasonable Efforts to have signed, signed all legal documents as are reasonably necessary to file and prosecute such patent applications or to obtain or maintain such patents. (d) The Parties shall share equally the out-of-pocket patent filing, prosecution and maintenance expenses incurred with respect to Patent Rights comprising Joint Collaboration IP.

Joint Collaboration IP. (a) [***] Subject to ALNYLAM's continuing right to the prior review of, comment on, revision to and approval of material documents, which shall have not be unreasonably delayed or withheld, MERCK has the first right sole responsibility to, at [***] MERCK's discretion, file, prosecute conduct ex parte and inter partes prosecution, and maintain (including the defense of any interference or opposition proceedings)) in the Territory, all Patent Rights comprising Joint Collaboration IP (other than Broad RNAi Technology Collaboration IP), in the names of both Alnylam ALNYLAM and GenzymeMERCK. Notwithstanding the foregoing, at if (a) ALNYLAM is the Continuing Party with respect to a Royalty-Bearing Product and the Joint Collaboration IP Covers or claims such Royalty-Bearing Product or (b) the Joint Collaboration IP Covers or claims a [***] Product and MERCK has not exercised its Opt-In Right, then ALNYLAM shall have the sole cost responsibility to, at ALNYLAM's discretion, file, conduct ex parte and expense. inter partes prosecution, and maintain (including the defense of any interference or opposition proceedings) in the Territory, all Patent Rights comprising Joint Collaboration IP Covering or claiming such Royalty-Bearing Product or such [***] Product in the names of both ALNYLAM and MERCK. Each Party shall consult with [***] on use Commercially Reasonable Efforts to make available to the filingProsecuting Party or its authorized attorneys, prosecution and maintenance agents or representatives, such of all its employees as the Prosecuting Party in its reasonable judgment deems necessary in order to assist it in obtaining patent protection for such Patent RightsJoint Collaboration IP. Each Party shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute patent applications or to obtain or maintain patents in respect of such Joint Collaboration IP, at its own costno cost to the Prosecuting Party. (b) [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of documents received from outside counsel in the course of such filing, prosecution or maintenance of Joint Collaboration IP and/or copies of documents relevant to such preparation, filing, prosecution, and maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by [***] and shall consider in good faith timely comments from [***] thereon. [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of such documents as filed in the relevant patent offices. (c) In the event that [***] elects not to file or continue to prosecute or maintain patent protection on any Joint Collaboration IP, [***] shall have the right (but not the obligation) to file, prosecute and maintain Patent Rights comprising Joint Collaboration IP in the names of both Alnylam and Genzyme at [***] sole cost and expense. If [***] exercises such right, [***] shall make available to ACTIVE/100404760.2 [***] its authorized attorneys, agents or representatives, and such of its employees as are reasonably necessary to assist [***] in obtaining and maintaining the patent protection described under this Section 10.3.3(c). [***] shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute such patent applications or to obtain or maintain such patents.

Joint Collaboration IP. (a) [***] shall 14.3.5.1. Subject to remainder of this Section 14.3.5, as between the Parties, Novartis will have the first right to(but not the obligation), at [***] Novartis’ sole discretion, fileand sole responsibility for all applicable Patents Costs, prosecute to Prosecute and maintain (including the defense of any interference or opposition proceedings), Maintain all Patent Rights comprising Patents within Joint Collaboration IP, in the names of both Alnylam Novartis and GenzymeXencor. 14.3.5.2. In the event that Novartis elects not to Prosecute and Maintain (or not to continue to Prosecute and Maintain, including filing a Patent claiming priority to a -121- Patent prior to its issuance, or, in the case of foreign deadlines for filing divisionals, prior to such deadline), any Patent within Joint Collaboration IP anywhere in the world, Novartis will notify Xencor at least [...***...] sole cost and expense. [***] shall consult with [***] on the filing, prosecution and maintenance of all before any such Patent Rightswithin Joint Collaboration IP would become abandoned, no longer available or otherwise forfeited, Xencor will have the right (but not the obligation), at Xencor’s sole discretion, and sole responsibility for all applicable Patents Costs, to Prosecute and Maintain such Patent, in the names of both Novartis and Xencor. 14.3.5.3. Each Party shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file when controlling Prosecution and prosecute patent applications or to obtain or maintain patents in respect Maintenance of such Patents within Joint Collaboration IPIP will (a) furnish the other Party, at its own cost. (b) [***] shall furnish to [***] via electronic mail or such other such method as mutually agreed by the Parties Parties, (i) copies of substantive proposed filings and documents received from outside counsel or generated internally in the course of Prosecuting and Maintaining such filing, prosecution or maintenance of Patents within Joint Collaboration IP and/or IP, and (ii) copies of documents filed with the relevant patent offices and other Governmental Authorities with respect to such preparation, filing, prosecutionPatents within Joint Collaboration IP, and maintenance (iii) such other substantive documents related to the Prosecution and Maintenance of such Patents within Joint Collaboration IP, and as applicable in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by [***] the other Party and shall (b) consider in good faith timely comments from [***] the other Party with respect thereon. [***] shall Each Party will furnish to [***] the other Party, via electronic mail or such other such method as mutually agreed by the Parties Parties, copies of such documents as filed in with the relevant national patent offices. (c) In the event that [***] elects not offices and other Governmental Authorities with respect to file or continue to prosecute or maintain patent protection on any such Patents within Joint Collaboration IP, [***] shall have the right (but not the obligation) to file, prosecute and maintain Patent Rights comprising Joint Collaboration IP in the names of both Alnylam and Genzyme at [***] sole cost and expense. If [***] exercises such right, [***] shall make available to ACTIVE/100404760.2 [***] its authorized attorneys, agents or representatives, and such of its employees as are reasonably necessary to assist [***] in obtaining and maintaining the patent protection described under this Section 10.3.3(c). [***] shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute such patent applications or to obtain or maintain such patents.

Joint Collaboration IP. (ai) [***] shall have the first right to, at [***] discretion, file, prosecute and maintain (including the defense of any interference interference, opposition or opposition proceedingsany other pre- or post-grant proceedings or challenges), all Patent Rights comprising Joint Collaboration IP, in the names of both Alnylam and Genzyme, at [***] sole cost and expenseVir. [***] shall consult with provide [***], sufficiently in advance for [***] on the filingto comment, prosecution and maintenance with copies of all patent applications and other material submissions and correspondence intended to be filed with any patent counsel or patent authorities pertaining to Patent Rights comprising Joint Collaboration IP, and [***] shall consider in good faith [***] reasonable and promptly provided comments and advice with respect to the prosecution or maintenance strategy with respect to such Patent Rights; provided, however, that if [***] determines that [***] comments or advice are not reasonable, [***] shall promptly notify [***] thereof and the Parties shall promptly discuss such determination. [***] shall promptly provide [***] with copies of all material correspondence received from any patent counsel or patent authorities pertaining to Patent Rights comprising Joint Collaboration IP. Each Party shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute patent applications or to obtain or maintain patents in respect of such Joint Collaboration IP, at its own cost. (b) [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of documents received from outside counsel in the course of such filing, prosecution or maintenance of Joint Collaboration IP and/or copies of documents relevant to such preparation, filing, prosecution, and maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by [***] and shall consider in good faith timely comments from [***] thereon. [***] shall furnish to [***] via electronic mail or other such method as mutually agreed by the Parties copies of such documents as filed in the relevant patent offices. (cii) In the event that [***] elects not to file or continue to prosecute or maintain patent protection on any Joint Collaboration IPIP in the Territory, [***] shall notify [***] of such decision in [***] so as to permit [***] to decide whether to seek, prosecute and maintain such Patent Right and to take any necessary actions without losing patent protection, and [***] shall have the right (but not the obligation) ), to file, prosecute and maintain in any country Patent Rights comprising Joint Collaboration IP in the names of both Alnylam and Genzyme at [***] sole cost and expenseVir. If [***] exercises such right, [***] shall make available to ACTIVE/100404760.2 [***] its documentation, and its authorized attorneys, agents or representatives, and such of its employees employees, as are reasonably necessary to assist [***] in obtaining and maintaining the patent protection described under this Section 10.3.3(c8.3(c)(ii). [***] shall sign, or use Commercially Reasonable Efforts to have signed, all legal documents as are reasonably necessary to file and prosecute such patent applications or to obtain or maintain such patents.