Common use of Joint Patent Committee Clause in Contracts

Joint Patent Committee. (a) The Parties will establish a “Joint Patent Committee” or “JPC.” The JPC will serve as the primary contacts and forum for discussion between the Parties with respect to intellectual property matters arising under this Agreement, and will cooperate with respect to the activities set forth in this ARTICLE 6. A strategy will be discussed with regard to prosecution and maintenance, defense and enforcement of Isis Product-Specific Patents, GSK Product-Specific Patents and Jointly-Owned Collaboration Patents that would be and/or are licensed to GSK under Section 4.1.1 in connection with a Collaboration Target or a Compound included in a Collaboration Program, defense against allegations of infringement of Third Party Patent Rights, and licenses to Third Party Patent Rights or Know-How, and any material change to any license to Third Party Patents Rights or Know-How in existence as of the Effective Date, in each case to the extent such matter would be reasonably likely to have a material impact on the Collaboration or the licenses granted hereunder. The Joint Patent Committee is established as of the Effective Date and will dissolve as a formal governing body upon the earlier of (i) the exercise or expiration of the Option with respect to the last Collaboration Program (ii) the Parties’ mutual agreement or (iii) after the Collaboration Term, Isis’ written notice to GSK of its intention to disband and no longer participate in the JPC. Once Isis has provided such written notice, the JPC shall have no further obligations under this Agreement and the matters to be decided by the JPC shall be decided by the Parties.

Joint Patent Committee. (a) The Parties will establish a “Joint Patent Committee” or “JPC.” promptly following the Effective Date. The JPC will serve as the primary contacts contact and forum for discussion between the Parties with respect to intellectual property matters arising under this Agreement, with responsibilities including (i) the preparation of the intellectual property strategy to govern the Parties’ activities set forth in the Neurology Plans and the activities set forth in this ARTICLE 7, (ii) making recommendations following discussion by the Parties regarding Third Party intellectual property rights that may be necessary or useful to perform activities under, and the intellectual property considerations to be taken into account in, each Target Sanction Plan in accordance with Section 1.2.3(d)(iv), (iii) making recommendations with respect to intellectual property considerations to be taken into account in each Development Candidate Identification Plan under Section 1.8.2(a), including any Biogen Background Technology to be included in any Development Candidate Identification Plan (subject to Biogen’s agreement in its sole discretion with respect thereto), (iv) the preparation of recommendations with respect to intellectual property considerations in connection with proposed Development Candidates and Related Program Compounds for consideration under Section 1.8.3(d)(i), (v) assessing and making recommendations to the Neurology JDC prior to the Completion of IND-Enabling Toxicology Studies regarding any Patent Rights of any Third Party that may be necessary or useful for the Development, Manufacture or Commercialization of any Development Candidate that is the subject of such IND-Enabling Toxicology Studies and (vi) evaluating any activities under a Neurology Plan that are proposed to be conducted with an academic or non-profit collaborator and making recommendations as to where and with whom such activities should be conducted as set forth under Section 1.8.7, and in each case will cooperate with respect to any such activities. Ionis’ obligation to participate in the JPC will terminate on the later of (A) the end of the Research Term and (B) Biogen’s exercise of (or the expiration or termination of) the last Option. Thereafter, Ionis will have the right, but not the obligation, to participate in JPC meetings, but shall nevertheless continue to coordinate with Biogen with respect to the activities set forth in this ARTICLE 6. A strategy will be discussed with regard to prosecution and maintenance, defense and enforcement of Isis Product-Specific Patents, GSK Product-Specific Patents and Jointly-Owned Collaboration Patents that would be and/or are licensed to GSK under Section 4.1.1 in connection with a Collaboration Target or a Compound included in a Collaboration Program, defense against allegations of infringement of Third Party Patent Rights, and licenses to Third Party Patent Rights or Know-How, and any material change to any license to Third Party Patents Rights or Know-How in existence as of 7 during the Effective Date, in each case to the extent such matter would be reasonably likely to have a material impact on the Collaboration or the licenses granted hereunder. The Joint Patent Committee is established as of the Effective Date and will dissolve as a formal governing body upon the earlier of (i) the exercise or expiration of the Option with respect to the last Collaboration Program (ii) the Parties’ mutual agreement or (iii) after the Collaboration Agreement Term, Isis’ written notice to GSK of its intention to disband and no longer participate in the JPC. Once Isis has provided such written notice, the JPC shall have no further obligations under this Agreement and the matters to be decided by the JPC shall be decided by the Parties.

Joint Patent Committee. (a) The Parties will establish a “Joint Patent Committee” or Committee (the “JPC.” ”). The JPC will serve as the primary contacts contact and forum for discussion between the Parties with respect to intellectual property matters arising under this Agreement, including the preparation of the intellectual property assessment to be included in each Development Candidate Data Package and will cooperate with respect to the activities set forth in this ARTICLE 67, and will cooperate with respect to any such activities. A Ionis’ obligation to participate in the JPC will terminate upon Biogen’s exercise of (or the expiration or termination of) the last Option. Thereafter, Ionis will have the right, but not the obligation, to participate in JPC meetings. In preparing the intellectual property assessment to be included in each Development Candidate Data Package, the JPC will discuss a strategy will be discussed with regard to intellectual property considerations with respect to the applicable Development Candidate, including prosecution and maintenance, defense and enforcement of Isis Product-Specific Patents, GSK Ionis Product-Specific Patents and Jointly-Owned Collaboration Patents that would be and/or or are licensed to GSK Biogen under Section 4.1.1 in connection with a Collaboration Target or a Compound included in a Collaboration ProgramProduct and Biogen Product-Specific Patents, defense against allegations of infringement of Third Party Patent Rights, and licenses to Third Party Patent Rights or Know-How, and any material change to any license to Third Party Patents Rights or Know-How in existence as of the Effective Date, in each case to the extent such matter would be reasonably likely to have a material impact on this Agreement or the Collaboration Original Agreement or the licenses granted hereunder or thereunder, which strategy will be considered in good faith by the Party entitled to prosecute, enforce or defend such Patent Rights, as applicable, hereunder, but will not be binding on such Party. (b) Ionis or Biogen (as applicable) will provide the JPC with notice of any Know-How or Patent Rights discovered, developed, invented or created jointly by such Party and a Third Party in the performance of activities under the ASO Development Candidate Identification Plan or activities under the preclinical toxicology strategy for a Collaboration Program, or solely by a Third Party performing activities under the ASO Development Candidate Identification Plan or activities under the preclinical toxicology strategy for a Collaboration Program on such Party’s behalf (such Know-How and Patent Rights, the “Collaborator IP”) promptly after such Party receives notice or otherwise becomes aware of the existence of such Collaborator IP. The Joint Patent Committee is established as JPC will determine whether any such Collaborator IP would be infringed by the Development, registration, Manufacture or Commercialization of the Effective Date and will dissolve applicable Development Candidate or any Compound under consideration for potential designation as a formal governing body upon Development Candidate. If the earlier JPC (or independent patent counsel engaged pursuant to this Section 7.1.3(b)) determines that any Collaborator IP would be infringed by such Development, registration, Manufacture or Commercialization, [***]; provided that, [***]. Confidential Notwithstanding any provision to the contrary in this Agreement, if Collaborator IP arises from activities performed by a Third Party under the ASO Development Candidate Identification Plan or activities under the preclinical toxicology strategy for a Collaboration Program, then any payment obligations arising under the applicable [***] based on the Development or Commercialization of (i) a Product will be paid as follows: [***]. With respect to any such Collaborator IP [***], Biogen will have the exercise or expiration right in accordance with Section 4.1.5 to elect to exclude any such Collaborator IP from the applicable license granted to Biogen under Section 4.1.1 by providing Ionis written notice prior to Option exercise. If, prior to the date the applicable license under Section 4.1.1 is granted hereunder, Biogen provides Ionis with such a written notice to exclude certain of such Collaborator IP from such license, such Collaborator IP will not be included in the Option Licensed Technology licensed with respect to the last Collaboration Program (ii) the Parties’ mutual agreement or (iii) after the Collaboration Term, Isis’ applicable Products under this Agreement. If Biogen does not provide Ionis with such a written notice to GSK of its intention exclude such Collaborator IP prior to disband the date the applicable license under Section 4.1.1 is granted hereunder, such Collaborator IP (and no longer participate any Third Party Obligations to the extent applicable to Products) will be included in the JPCLicensed Technology licensed with respect to the applicable Products under this Agreement. Once Isis has provided In case of a dispute in the JPC over whether any Collaborator IP would be infringed by the Development, registration, Manufacture or Commercialization of the applicable Development Candidate or any Compound under consideration for potential designation as the Development Candidate, at the non-contracting Party’s request, such written noticedispute will be resolved by independent patent counsel not engaged or regularly employed in the past two years by either Party and reasonably acceptable to both Parties, taking into account any existing prior art. The decision of such independent patent counsel will be binding on the Parties. Expenses of such patent counsel will be borne by the non-contracting Party. (c) In addition, the JPC shall have no further obligations under this Agreement and will be responsible for the matters to be decided by determination of inventorship of Program Patents in accordance with United States patent laws. In case of a dispute in the JPC shall (or otherwise between Ionis and Biogen) over inventorship of Program Patents, if the JPC cannot resolve such dispute, such dispute will be decided resolved by independent patent counsel not engaged or regularly employed in the past two years by either Party and reasonably acceptable to both Parties. The decision of such independent patent counsel will be binding on the Parties. Expenses of such patent counsel will be shared equally by the Parties.

Joint Patent Committee. (a) The Parties will establish a “Joint Patent Committee” or “JPC.” promptly following the Effective Date. The JPC will serve as the primary contacts contact and forum for discussion between the Parties with respect to intellectual property matters arising under this Agreement, with responsibilities including (i) the preparation of the intellectual property strategy to govern the Parties’ activities set forth in the Neurological Disease Research Plan and the activities set forth in this ARTICLE 7, (ii) making recommendations following discussion by the Parties regarding Third Party intellectual property rights that may be necessary or useful to perform activities under, and the intellectual property considerations to be taken into account in, the Neurological Disease Research Plan, (iii) making recommendations with respect to intellectual property considerations to be taken into account in each ASO Development Candidate Identification Plan, (iv) the preparation of recommendations with respect to intellectual property considerations in connection with proposed Development Candidates for consideration by the Parties, (v) assessing and making recommendations to the Neurology JDC prior to the completion of IND-Enabling Toxicology Studies regarding any Patent Rights of any Third Party that may be necessary or useful for the Development, Manufacture or Commercialization of any Development Candidate that is the subject of such IND-Enabling Toxicology Studies and (vi) evaluating any activities under a Neurology Plan that are proposed to be conducted with an academic or non-profit collaborator and making recommendations as to where and with whom such activities should be conducted, and in each case will cooperate with respect to any such activities. Ionis’ obligation to participate in the JPC will terminate on the later of (A) the end of the Research Term and (B) Biogen’s exercise of (or the expiration or termination of) the last Option. Thereafter, Ionis will have the right, but not the obligation, to participate in JPC meetings, but shall nevertheless continue to coordinate with Biogen with respect to the activities set forth in this ARTICLE 6. A strategy will be discussed with regard to prosecution and maintenance, defense and enforcement of Isis Product-Specific Patents, GSK Product-Specific Patents and Jointly-Owned Collaboration Patents that would be and/or are licensed to GSK under Section 4.1.1 in connection with a Collaboration Target or a Compound included in a Collaboration Program, defense against allegations of infringement of Third Party Patent Rights, and licenses to Third Party Patent Rights or Know-How, and any material change to any license to Third Party Patents Rights or Know-How in existence as of 7 during the Effective Date, in each case to the extent such matter would be reasonably likely to have a material impact on the Collaboration or the licenses granted hereunder. The Joint Patent Committee is established as of the Effective Date and will dissolve as a formal governing body upon the earlier of (i) the exercise or expiration of the Option with respect to the last Collaboration Program (ii) the Parties’ mutual agreement or (iii) after the Collaboration Agreement Term, Isis’ written notice to GSK of its intention to disband and no longer participate in the JPC. Once Isis has provided such written notice, the JPC shall have no further obligations under this Agreement and the matters to be decided by the JPC shall be decided by the Parties.

Joint Patent Committee. (a) The Parties will establish a “Joint Patent Committee” or “JPC.” The JPC will serve as the primary contacts contact and forum for discussion between the Parties with respect to intellectual property matters arising under this Agreement, with responsibilities including (i) the preparation of the intellectual property strategy to govern the Parties’ activities set forth in the Collaboration Program Research Plans and the activities set forth in this ARTICLE 7, (ii) making recommendations following discussion by the Parties regarding Third Party intellectual property rights that may be necessary or useful to perform activities under, and the intellectual property considerations to be taken into account in, Collaboration Program Research Plans, (iii) making recommendations with respect to intellectual property considerations to be taken into account in each Development Plan, (iv) the preparation of recommendations with respect to intellectual property considerations in connection with proposed Development Candidates for consideration by the Parties, (v) assessing and making recommendations to the Neurology JSC prior to the Completion of IND-Enabling Toxicology Studies regarding any Patent Rights of any Third Party that may be necessary or useful for the Development, Manufacture or Commercialization of any Development Candidate that is the subject of such IND-Enabling Toxicology Studies and (vi) evaluating any activities under a Collaboration Program Research Plan or Development Plan that are proposed to be conducted with an academic or non-profit collaborator and making recommendations as to where and with whom such activities should be conducted, and in each case will cooperate with respect to any such activities. Ionis’ obligation to participate in the JPC will terminate on the later of (A) the end of the Drug Discovery Term and (B) Biogen’s exercise of (or the expiration or termination of) the last Option. Thereafter, Ionis will have the right, but not the obligation, to participate in JPC meetings, but shall nevertheless continue to coordinate with Biogen with respect to the activities set forth in this ARTICLE 67 during the Agreement Term. A EXECUTION VERSION (b) The JPC will discuss a strategy will be discussed and make recommendations with regard to prosecution intellectual property considerations (i) with respect to the Parties’ activities under the Collaboration Program, Drug Discovery Program and maintenancethe Drug Development Program, promptly following the Amendment Date and (ii) with respect to each Collaboration Program, promptly after such Collaboration Program is designated, which strategies shall include (A) considerations for identifying potential inventions and making inventorship determinations, (B) considerations when selecting each Development Candidate, (C) considerations for Prosecution and Maintenance, defense and enforcement of Isis Ionis Product-Specific PatentsPatents that would be or are licensed to Biogen under Section 4.1.1 in connection with a Product, GSK Biogen Product-Specific Patents and Jointly-Owned Collaboration Patents that would be and/or are licensed to GSK under Section 4.1.1 in connection with a Collaboration Target or a Compound included in a Collaboration ProgramProgram Patents, (D) defense against allegations of infringement of Third Party Patent Rights, Rights and (E) licenses to Third Party Patent Rights or Know-How, and any material change to any license to Third Party Patents Rights or Know-How in existence as of the Effective Date, in each case ((A) through (E)) to the extent such matter would be reasonably likely to have a material impact on the Collaboration Agreement or the ownership of intellectual property or the licenses granted hereunder. The Joint Patent Committee is established applicable strategy and the JPC’s recommendations, as applicable, will be considered in good faith in the performance of the Effective Date Collaboration Program Research Plans and will dissolve as a formal governing body upon Development Plans, the earlier of (i) the exercise or expiration preparation of the Option with respect to the last Collaboration Program (ii) the Parties’ mutual agreement or (iii) after the Collaboration Term, Isis’ written notice to GSK of its intention to disband and no longer participate in the JPC. Once Isis has provided such written notice, the JPC shall have no further obligations under this Agreement and the matters intellectual property assessment to be decided included in each Development Candidate Data Package and by the JPC shall Party entitled to designate a Development Candidate or prosecute, enforce and defend such Patent Rights, as applicable, hereunder, but will not be decided by the Partiesbinding on such Party.