Common use of Joint IP Clause in Contracts

Joint IP. Pfizer and Servier shall jointly and equally (50/50) own any Joint Intellectual Property, and the Parties will share (50/50) of the remaining interest in such Joint Intellectual Property. Each Party shall, and does hereby, assign, and shall cause its Affiliates, licensees, contractors and Sublicensees (and its and their employees or agents) to so assign (or, in the case of contractors, licensees and Sublicensees, use Commercially Reasonable Efforts to cause such contractors, licensees and Sublicensees to assign or license), to the other Party, without additional compensation, such right, title and interest in and to any Joint Intellectual Property, as is necessary to fully effect the joint ownership provided for in this Section 12.1.3. Subject to the grant of licenses under Section 2.1, each Party’s representations, warranties and covenants under ARTICLE 14 and the Parties’ other rights and obligations under this Agreement, each Party shall be free to exploit, either itself or through the grant of licenses to Third Parties (which Third Party licenses may be further sublicensed), Joint IP throughout the world without restriction, without the need to obtain further consent from or provide notice to the other Party and without any duty to account or otherwise make any payment of any compensation to the other Party. Notwithstanding anything to the contrary, Pfizer acknowledges and agrees to comply with its obligations to Cellectis under the Servier / Cellectis Agreement arising from being Servier’s sublicensee under that agreement, (except to any extent relieved in accordance with any agreement between Pfizer and Cellectis related thereto) and obligations to Cellectis with respect to, any and all inventions, Know-How and other intellectual property arising during the Term under this Agreement that would be defined as “Joint IP” under the Servier / Cellectis Agreement shall be governed by the terms of the Servier / Cellectis Agreement, and the Parties’ rights in and each Party’s obligations to the other Party under this Agreement for any such “Joint IP” shall be subject to any applicable terms of the Servier / Cellectis Agreement.

Joint IP. Pfizer and Servier (a) MacroGenics shall jointly and equally (50/50) own any Joint Intellectual Propertyhave the first right, at MacroGenics’ discretion, to file, prosecute, and maintain (including the Parties will share defense of any interference or opposition proceedings), all Patents claiming patentable inventions included in the Joint IP (50/50“Joint Patents”) of in the remaining interest in such Joint Intellectual Property. Each Party shall, and does hereby, assign, and shall cause its Affiliates, licensees, contractors and Sublicensees (and its and their employees or agents) to so assign (orMacroGenics Territory, in the case names of contractorsboth MacroGenics and Servier. Servier shall have the first right, licensees at Servier’s discretion, to file, prosecute, and Sublicensees, use Commercially Reasonable Efforts to cause such contractors, licensees and Sublicensees to assign maintain (including the defense of any interference or licenseopposition proceedings), all Joint Patents in the Servier Territory, in the names of both MacroGenics and Servier. (b) With respect to Joint Patents, if the Party with the responsibility for filing, prosecuting and maintaining such Patents in accordance with clause (a) above (the “Responsible Party”) elects not to seek or continue to seek or maintain patent protection on any Joint Patent in its territory, the other Party shall have the right to seek, prosecute and maintain patent protection on such Joint Patent in the other Party, without additional compensation, such ’s name and the Responsible Party shall assign its entire right, title and interest in and to any such Joint Intellectual Property, as is necessary to fully effect the joint ownership provided for in this Section 12.1.3. Subject to the grant of licenses under Section 2.1, each Party’s representations, warranties and covenants under ARTICLE 14 and the Parties’ other rights and obligations under this Agreement, each Party shall be free to exploit, either itself or through the grant of licenses to Third Parties (which Third Party licenses may be further sublicensed), Joint IP throughout the world without restriction, without the need to obtain further consent from or provide notice to the other Party and without any duty to account or otherwise make any payment of any compensation Patent to the other Party. Notwithstanding anything The Responsible Party shall use Commercially Reasonable Efforts to the contrary, Pfizer acknowledges and agrees to comply with its obligations to Cellectis under the Servier / Cellectis Agreement arising from being Servier’s sublicensee under that agreement, (except to any extent relieved in accordance with any agreement between Pfizer and Cellectis related thereto) and obligations to Cellectis with respect to, any and all inventions, Know-How and other intellectual property arising during the Term under this Agreement that would be defined as “Joint IP” under the Servier / Cellectis Agreement shall be governed by the terms of the Servier / Cellectis Agreement, and the Parties’ rights in and each Party’s obligations make available to the other Party under this Agreement for its authorized attorneys, agents or representatives, and to assist the other Party in obtaining and maintaining such patent protection. The Responsible Party shall sign or use Commercially Reasonable Efforts to have signed all legal documents necessary to file and prosecute such patent applications or to obtain or maintain such patents. (c) The Parties shall establish procedures to coordinate the filing and prosecution of Joint Patent. With respect to Joint Patents, the Responsible Party shall provide the other Party, within *** after submitting or receiving such filings or correspondence, with copies of all filings and correspondence submitted to and received from patent offices and, with respect to substantive filings and correspondence to be submitted to patent offices, shall use reasonable efforts to provide the other Party with drafts of such filings and correspondence reasonably in advance of submission and shall consider in good faith any comments regarding such “Joint IP” filings and correspondence that the other Party may timely provide. (d) Each Party shall be subject to any applicable terms responsible for the costs and expenses it occurs in connection with the filing, prosecution and maintenance of the Servier / Cellectis AgreementJoint Patents.

Joint IP. Pfizer and Servier (a) MacroGenics shall jointly and equally (50/50) own any Joint Intellectual Propertyhave the first right, at MacroGenics’ discretion, to file, prosecute, and maintain (including the Parties will share defense of any interference or opposition proceedings), all Patents claiming patentable inventions included in the Joint IP (50/50“Joint Patents”) of in the remaining interest in such Joint Intellectual Property. Each Party shall, and does hereby, assign, and shall cause its Affiliates, licensees, contractors and Sublicensees (and its and their employees or agents) to so assign (orMacroGenics Territory, in the case names of contractorsboth MacroGenics and Servier. Servier shall have the first right, licensees at Servier’s discretion, to file, prosecute, and Sublicensees, use Commercially Reasonable Efforts to cause such contractors, licensees and Sublicensees to assign maintain (including the defense of any interference or licenseopposition proceedings), all Joint Patents in the Servier Territory, in the names of both MacroGenics and Servier. (b) With respect to Joint Patents, if the Party with the responsibility for filing, prosecuting and maintaining such Patents in accordance with clause (a) above (the “Responsible Party”) elects not to seek or continue to seek or maintain patent protection on any Joint Patent in its territory, the other Party shall have the right to seek, prosecute and maintain patent protection on such Joint Patent in the other Party, without additional compensation, such ’s name and the Responsible Party shall assign its entire right, title and interest in and to any such Joint Intellectual Property, as is necessary to fully effect the joint ownership provided for in this Section 12.1.3. Subject to the grant of licenses under Section 2.1, each Party’s representations, warranties and covenants under ARTICLE 14 and the Parties’ other rights and obligations under this Agreement, each Party shall be free to exploit, either itself or through the grant of licenses to Third Parties (which Third Party licenses may be further sublicensed), Joint IP throughout the world without restriction, without the need to obtain further consent from or provide notice to the other Party and without any duty to account or otherwise make any payment of any compensation Patent to the other Party. Notwithstanding anything The Responsible Party shall use Commercially Reasonable Efforts to the contrary, Pfizer acknowledges and agrees to comply with its obligations to Cellectis under the Servier / Cellectis Agreement arising from being Servier’s sublicensee under that agreement, (except to any extent relieved in accordance with any agreement between Pfizer and Cellectis related thereto) and obligations to Cellectis with respect to, any and all inventions, Know-How and other intellectual property arising during the Term under this Agreement that would be defined as “Joint IP” under the Servier / Cellectis Agreement shall be governed by the terms of the Servier / Cellectis Agreement, and the Parties’ rights in and each Party’s obligations make available to the other Party under this Agreement for its authorized attorneys, agents or representatives, and to assist the other Party in obtaining and maintaining such patent protection. The Responsible Party shall sign or use Commercially Reasonable Efforts to have signed all legal documents necessary to file and prosecute such patent applications or to obtain or maintain such patents. (c) The Parties shall establish procedures to coordinate the filing and prosecution of Joint Patents. With respect to Joint Patents, the Responsible Party shall provide the other Party, within *** after submitting or receiving such filings or correspondence, with copies of all filings and correspondence submitted to and received from patent offices and, with respect to substantive filings and correspondence to be submitted to patent offices, shall use reasonable efforts to provide the other Party with drafts of such filings and correspondence reasonably in advance of submission and shall consider in good faith any comments regarding such “Joint IP” filings and correspondence that the other Party may timely provide. (d) Each Party shall be subject to any applicable terms responsible for the costs and expenses it occurs in connection with the filing, prosecution and maintenance of the Servier / Cellectis AgreementJoint Patents.

Joint IP. Pfizer The Parties shall each own an equal, undivided interest in: (a) any and Servier shall all Know-How that is created, conceived, discovered, first generated, invented, first made or first reduced to practice, in each case, jointly by or on behalf of Prothena or its Affiliates, on the one hand, and equally Celgene or its Affiliates, on the other hand, pursuant to the conduct of activities under this Agreement at any time during the Term (50/50the “Joint Know- CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) own NOT MATERIAL AND (II) IS THE TYPE THAT THE REGISTRANT TREATS AS PRIVATE OR CONFIDENTIAL. How”), and (b) any Patents that claim any Joint Intellectual PropertyKnow-How (the “Joint Patents”, and together with Joint Know-How the Parties will share (50/50) of the remaining interest in such “Joint Intellectual PropertyIP”). Each Party shall, and does hereby, shall assign, and shall cause its Affiliates, licensees, contractors and Sublicensees (and its and their employees or agents) to so assign (or, in the case of contractors, licensees and Sublicensees, use Commercially Reasonable Efforts to cause such contractors, licensees and Sublicensees to assign or license)hereby assigns, to the other Party, without additional compensation, such right, title a joint equal and undivided interest in and to any such Joint Intellectual PropertyIP (provided, as is necessary to fully effect however, that for clarity, the foregoing joint ownership provided for rights with respect to Joint IP shall not be construed as granting, conveying or creating any license or other rights to any of the other Party’s other intellectual property, unless otherwise expressly set forth in this Agreement), and at the request of a Party, the other Party will execute such documents (including any necessary assignments) to effect such joint ownership of such Joint IP. Each Party shall have the right to disclose (except as otherwise set forth in Section 12.1.3. Subject 7.2) and exploit the Joint IP without a duty of seeking consent or accounting to the grant of licenses under Section 2.1other Party except as expressly provided in this Agreement; provided that, each Party’s representations, warranties and covenants under ARTICLE 14 and such rights shall be subject to the Parties’ other rights and licenses granted to Celgene and Prothena hereunder (or under the Master Collaboration Agreement, any other Global License Agreement or any U.S. License Agreement), including the obligations of Prothena as set forth in Article 4. The Parties hereby acknowledge and agree that any and all Joint IP (as defined in the Licensed Program U.S. License Agreement) shall be deemed to be Joint IP under this Agreement, each Party and from and after the Effective Date, the provisions of this Agreement shall be free apply with respect to exploit, either itself or through the grant of licenses to Third Parties (which Third Party licenses may be further sublicensed), all such Joint IP throughout (as defined in the world without restriction, without the need to obtain further consent from or provide notice to the other Party and without any duty to account or otherwise make any payment of any compensation to the other Party. Notwithstanding anything to the contrary, Pfizer acknowledges and agrees to comply with its obligations to Cellectis under the Servier / Cellectis Agreement arising from being Servier’s sublicensee under that agreement, (except to any extent relieved in accordance with any agreement between Pfizer and Cellectis related thereto) and obligations to Cellectis with respect to, any and all inventions, Know-How and other intellectual property arising during the Term under this Agreement that would be defined as “Joint IP” under the Servier / Cellectis Agreement shall be governed by the terms of the Servier / Cellectis Licensed Program U.S. License Agreement, and the Parties’ rights in and each Party’s obligations to the other Party under this Agreement for any such “Joint IP” shall be subject to any applicable terms of the Servier / Cellectis Agreement).

Joint IP. Pfizer and Servier (a) MacroGenics shall jointly and equally (50/50) own any Joint Intellectual Propertyhave the first right, at MacroGenics’ discretion, to file, prosecute, and maintain (including the Parties will share defense of any interference or opposition proceedings), all Patents claiming patentable inventions included in the Joint IP (50/50“Joint Patents”) of in the remaining interest in such Joint Intellectual Property. Each Party shall, and does hereby, assign, and shall cause its Affiliates, licensees, contractors and Sublicensees (and its and their employees or agents) to so assign (orMacroGenics Territory, in the case names of contractorsboth MacroGenics and Servier. Servier shall have the first right, licensees at Servier’s discretion, to file, prosecute, and Sublicensees, use Commercially Reasonable Efforts to cause such contractors, licensees and Sublicensees to assign maintain (including the defense of any interference or licenseopposition proceedings), all Joint Patents in the Servier Territory, in the names of both MacroGenics and Servier. (b) With respect to Joint Patents, if the Party with the responsibility for filing, prosecuting and maintaining such Patents in accordance with clause (a) above (the “Responsible Party”) elects not to seek or continue to seek or maintain patent protection on any Joint Patent in its territory, the other Party shall have the right to seek, prosecute and maintain patent protection on such Joint Patent in the other Party, without additional compensation, such ’s name and the Responsible Party shall assign its entire right, title and interest in and to any such Joint Intellectual Property, as is necessary to fully effect the joint ownership provided for in this Section 12.1.3. Subject to the grant of licenses under Section 2.1, each Party’s representations, warranties and covenants under ARTICLE 14 and the Parties’ other rights and obligations under this Agreement, each Party shall be free to exploit, either itself or through the grant of licenses to Third Parties (which Third Party licenses may be further sublicensed), Joint IP throughout the world without restriction, without the need to obtain further consent from or provide notice to the other Party and without any duty to account or otherwise make any payment of any compensation Patent to the other Party. Notwithstanding anything The Responsible Party shall use *** = Portions of this exhibit have been omitted pursuant to a request for confidential treatment. An unredacted version of this exhibit has been filed separately with the contrary, Pfizer acknowledges and agrees Commission. Commercially Reasonable Efforts to comply with its obligations to Cellectis under the Servier / Cellectis Agreement arising from being Servier’s sublicensee under that agreement, (except to any extent relieved in accordance with any agreement between Pfizer and Cellectis related thereto) and obligations to Cellectis with respect to, any and all inventions, Know-How and other intellectual property arising during the Term under this Agreement that would be defined as “Joint IP” under the Servier / Cellectis Agreement shall be governed by the terms of the Servier / Cellectis Agreement, and the Parties’ rights in and each Party’s obligations make available to the other Party under this Agreement for its authorized attorneys, agents or representatives, and to assist the other Party in obtaining and maintaining such patent protection. The Responsible Party shall sign or use Commercially Reasonable Efforts to have signed all legal documents necessary to file and prosecute such patent applications or to obtain or maintain such patents. (c) The Parties shall establish procedures to coordinate the filing and prosecution of Joint Patents. With respect to Joint Patents, the Responsible Party shall provide the other Party, within *** after submitting or receiving such filings or correspondence, with copies of all filings and correspondence submitted to and received from patent offices and, with respect to substantive filings and correspondence to be submitted to patent offices, shall use reasonable efforts to provide the other Party with drafts of such filings and correspondence reasonably in advance of submission and shall consider in good faith any comments regarding such “Joint IP” filings and correspondence that the other Party may timely provide. (d) Each Party shall be subject to any applicable terms responsible for the costs and expenses it occurs in connection with the filing, prosecution and maintenance of the Servier / Cellectis AgreementJoint Patents.