Common use of Joint Miscellaneous Know-How Clause in Contracts

Joint Miscellaneous Know-How. With respect to Joint Miscellaneous Know-How, Merck shall have the first right (in its discretion) to Prosecute Patent Rights for such Joint Miscellaneous Know-How (“Joint Miscellaneous Patent Rights”) in the name of both Merck and Ablynx. In connection therewith, Ablynx shall execute such documents and perform such ministerial acts as may be reasonably necessary for Merck to Prosecute Patent Rights claiming such Joint Miscellaneous Know-How. With respect to Patent Rights for a given Joint Miscellaneous Know-How, Merck (i) may elect not to Prosecute, (ii) may elect not to Prosecute in a particular country (including electing not to validate in a particular country) and/or (iii) may elect to discontinue Prosecution in a particular country; and in the case that Merck elects to discontinue the Prosecution in a particular country, Merck shall provide Ablynx with at least […***…] prior notice and Ablynx shall have the right, at its sole expense and upon written notice to Merck, to assume responsibility for the Prosecution of such Patent Rights for such Joint Miscellaneous Know-How (in the name of both Merck and Ablynx) to the extent Merck has elected not to do so. Merck may elect to use outside counsel of its choice for Prosecution of Joint Miscellaneous Patent Rights. Any and all of the reasonable external expenses and external costs incurred by either Party with respect to the Prosecution of Patent Rights for Joint Miscellaneous Know-How shall be […***…]; provided that either Party may inform the other Party in writing that it does not or no longer wishes to […***…] the cost for any one or more of the patent applications or patents within said Patent Rights (on a country-by-country basis), whereupon said Party shall, if requested in writing by the other Party, as soon as practicable upon written request of the other Party, assign, and hereby does assign, its interest in said patent application(s) or patent(s) in such country for which it no longer wants to […***…] the cost (but, for the avoidance of doubt, not any other patent applications or patents within the same patent family for which it is still willing to […***…] the costs) to the other Party, whereupon said Party shall no longer be required to […***…] the costs in respect of said patent application(s) or patent(s). In such event, said Party that no longer wants to […***…] the cost shall execute such documents and perform such ministerial acts, at such Party’s expense, as may be reasonably necessary to effect such assignment. Such assignment of interest in said patent application(s) or patent(s) for which a Party no longer wants to […***…] the costs shall not affect any licenses granted under ARTICLE 3 or otherwise under this Agreement.