Common use of Joint Patent Rights Clause in Contracts

Joint Patent Rights. (i) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the United States, European Union (in Europe through a European Patent Convention application) and Japan (collectively, the "Core Countries") and other countries agreed by the parties. The parties shall agree which party shall be responsible for conducting such activities with respect to a particular Joint Invention. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries and such amounts shall be included within the Research Program funding described in Section 2.3. (ii) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 7.2.2(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in such activities shall not grant any third party a license under its interest in the applicable Joint Invention in the applicable country or countries without the prior written consent of the other party.

Joint Patent Rights. (ia) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the United States, European Union (in Europe through a European Patent Convention application) and Japan (collectively, the "Core Countries") and other countries agreed by the parties. The parties shall agree which party shall be responsible for conducting such activities with respect to a particular Joint Invention. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries and such amounts shall be included within the Research Program funding described in Section 2.32.3 of the Collaboration Agreement. (iib) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 7.2.2(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in such activities shall not grant any third party a license under its interest in the applicable Joint Invention in the applicable country or countries without the prior written consent of the other party.

Joint Patent Rights. (i) The parties will cooperate Biogen Idec shall prepare, file, prosecute (including any interferences, oppositions, reissue proceedings and reexaminations) and maintain, in the Core Countries, jointly in Sobi’s and Biogen Idec’s names, any patent applications necessary to protect the proprietary positions of the Parties in any Jointly-Owned Patent Rights as further set forth in this Section 7.3(c). Sobi and Biogen Idec shall consult in good faith and mutually agree through the JPT as to any additional countries in which Biogen Idec shall file, prosecute and maintain patent applications covering the Joint Invention(sany such Patent Rights on a case-by-case basis. (ii) in the United States, European Union (in Europe through a European Patent Convention application) and Japan (collectively, the "Core Countries") and other countries agreed by the parties. The parties Parties shall agree which party shall be responsible for conducting such activities with respect to a particular Joint Invention. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. The parties will share equally (A) all expenses and fees paid by either Party to any patent office for the activities associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention the Jointly-Owned Patent Rights in the Core Countries and any additional countries agreed to by the Parties pursuant to Section 7.3(c)(i), and (B) any other agreed countries out-of-pocket expenses (including outside counsel fees) incurred by the prosecuting Party for the preparation, filing, prosecution, issuance and maintenance of any such amounts patent application and resulting patent. Any internal and/or out-of-pocket-expenses (including outside counsel fees) for review costs incurred by the non-prosecuting Party and any internal expenses incurred by the prosecuting Party shall be borne by the Party incurring the expense. The prosecuting Party shall invoice the non-prosecuting Party for fifty percent (50%) of such costs on a quarterly basis, and payment shall be due within forty-five (45) days after the date of such invoice. Notwithstanding anything herein, either Party may decline to pay its share of out-of-pocket expenses and fees for preparing, filing, prosecuting and maintaining any patent application or patent included in any Jointly-Owned Patent Rights in a particular Core Country or additional agreed country, in which case the declining Party shall assign to the other Party all of its right, title and interest in and to any such patent application or patent in the relevant Core Country or additional agreed country and all Patent Rights related thereto shall be considered part of such other Party’s Patent Rights (i.e., Biogen Idec Patent Rights or Sobi Patent Rights, as the case may be). (iii) Each Party shall make available to the other Party, or its authorized attorneys, agents or representatives, such of its employees whom the other Party in its reasonable judgment deems necessary in order to assist it in obtaining patent protection for any inventions included within the Research Program funding described in Section 2.3Jointly-Owned Patent Rights. Each Party shall sign or use its best efforts to have signed all legal documents necessary to file and prosecute patent applications or to obtain or maintain patents with respect to Jointly-Owned Patent Rights at no cost to the other Party. (iiiv) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it Each Party shall notify provide the other party heretoParty with copies of all proposed substantive communications to all patent offices regarding patent applications or patents on any inventions included within the Jointly-Owned Patent Rights in reasonable time before the due date in order to enable the other Party an opportunity to comment on the content thereof, unless the other Party has declined to pay the expenses thereof. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countriesGenerally, activities a reasonable time for review and comment shall be subject to Section 7.2.2(athirty (30) above. If only one party wishes to seek days, unless the time periods set for filing by the relevant patent protection with respect to such Joint Invention office is less than two (2) months from the date of receipt of the paper calling for a reply, in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expensewhich case a shorter reasonable time shall be applicable. In any such casesituation where a shorter reasonable time is to be used, the party declining to participate in such activities prosecuting Party shall not grant any third party a license under its interest in promptly notify the applicable Joint Invention in the applicable country or countries without the prior written consent other Party of the shorter period by which it intends to act. Each Party will provide the other partyParty with copies of all substantive communications from all patent offices regarding patent applications or patents on any inventions included within the Jointly-Owned Patent Rights promptly after the receipt thereof, unless the other Party has declined to pay the expenses thereof.

Joint Patent Rights. (i) The parties will cooperate to file, prosecute and maintain JSC shall determine the jurisdictions within the Territory in which patent applications covering will be filed with respect to Joint Patent Rights as well as the patent counsel that shall represent both Enanta and Abbott for the preparation, filing, prosecution and maintenance of Joint Invention(sPatent Rights. Each Party will independently select which countries it will financially support with respect to the preparation, filing, prosecution and maintenance of Joint Patent Rights. The Parties shall share (at a rate of [*****] of the total costs with respect to each country) in the United Statesexpenses incurred for the preparation, European Union (in Europe through a European Patent Convention application) and Japan (collectively, the "Core Countries") and other countries agreed by the parties. The parties shall agree which party shall be responsible for conducting such activities with respect to a particular Joint Invention. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance filing prosecution and maintenance of Joint Patent Rights in each country independently selected by both Parties. The expenses incurred for the preparation, filing, prosecution and maintenance of Joint Patent Rights in any patent application and resulting patent for a Joint Invention country that is selected by one Party but not by the other Party shall be borne solely by the Party selecting that country. For purposes of clarity, (a) neither Party shall be obligated to share in the Core Countries expenses incurred in the preparation, filing, prosecution and other agreed countries maintenance of Confidential materials omitted and filed separately with the Securities and Exchange Commission. Asterisks denote such amounts omission. 3/21/2019 <![CDATA[Collaborative Development & License Agreement]]> xxxxx://xxx.xxx.xxx/Archives/xxxxx/data/1177648/000119312512454422/d401292dex101.htm 134/136 any Patent Rights under this Agreement and (b) any decision by a Party not to share in the expenses incurred for the preparation, filing, prosecution and maintenance of Joint Patent Rights in any country shall be included within not affect the Research Program funding described in Section 2.3. (ii) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection rights of such Party with respect to such Joint Invention Patent Rights in such country or countries, activities shall be subject to country. Section 7.2.2(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in such activities shall not grant any third party a license under its interest in the applicable Joint Invention in the applicable country or countries without the prior written consent 11.1 of the other party.Agreement is hereby deleted in its entirety, and the following Section 11.1 is inserted in lieu of the deleted Section:

Joint Patent Rights. (ia) The parties will cooperate to file, prosecute and maintain patent applications covering the Joint Invention(s) in the United States, European Union (in Europe through a European Patent Convention application) and Japan (collectively, the "Core Countries") and other countries agreed by the parties. The parties shall agree which party shall be responsible for conducting such activities with respect to a particular Joint Invention. The party conducting such activities shall keep the other party fully informed as to the status of such patent matters, including, [*] CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. without limitation, by providing the other party the opportunity, at the other party's expense, to review and comment on any documents relating to the Joint Invention which will be filed in any patent office at least thirty (30) days before such filing, and promptly providing the other party copies of any documents relating to Joint Invention which the party conducting such activities receives from such patent offices, including notice of all interferences, reissues, reexaminations, oppositions or requests for patent term extensions. The parties will share equally all expenses and fees associated with the filing, prosecution, issuance and maintenance of any patent application and resulting patent for a Joint Invention in the Core Countries and other agreed countries and such amounts shall be included within the Research Program funding described in Section 2.32.3 of the Collaboration Agreement. (iib) In the event that either party wishes to seek patent protection with respect to any Joint Invention outside the Core Countries, it shall notify the other party hereto. If both parties wish to seek patent protection with respect to such Joint Invention in such country or countries, activities shall be subject to Section 7.2.2(a) above. If only one party wishes to seek patent protection with respect to such Joint Invention in such country or countries, it may file, prosecute and maintain patent applications and patents with respect thereto, at its own expense. In any such case, the party declining to participate in such activities shall not grant any third party a license under its interest in the applicable Joint Invention in the applicable country or countries without the prior written consent of the other party.