Common use of Joint Patent Rights Clause in Contracts

Joint Patent Rights. (a) Lilly, at Lilly’s expense, shall have the first right to control the preparation, filing, prosecution and maintenance of Joint Patent Rights. Lilly shall keep Zymeworks reasonably advised with respect to the status of the filing, prosecution and maintenance of the Joint Patent Rights and shall provide copies of material submissions to any patent office in any Major Market related to the filing, prosecution and maintenance of the Joint Patent Rights to Zymeworks for review and comment. Such copies shall be provided in advance of submission to the extent reasonably practicable. Lilly shall take into consideration any comments from Zymeworks; provided, however, that the Parties acknowledge and agree that if there is any dispute between the Parties regarding such patent matters, Lilly’s decision shall be final. Lilly shall promptly give notice to Zymeworks of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent Rights. (b) Lilly may elect not to file or to cease prosecution or maintenance of Joint Patent Rights on a country-by-country basis, and if it does so, Lilly shall give timely notice to Zymeworks. Zymeworks may by notice to Lilly assume filing for, prosecution or maintenance of such Joint Patent Rights at Zymeworks’ expense, in which case Lilly shall promptly assign to Zymeworks all of its rights, title and interest (except as provided below) in and to such Joint Patents, and such Joint Patents shall no longer be subject to the exclusive licenses set forth in Section 2.1; provided, however, the Parties acknowledge and agree that Lilly shall still retain its joint ownership rights in such Joint Patents and, therefore, shall retain the right to use and otherwise exploit such Joint Patent Rights in a manner consistent with its joint ownership interest in such Joint Patent Rights; and provided further that claims within such Joint Patent Rights shall remain within the definition of Valid Patent Claim (subject to the limitation set forth in such definition) for purposes of determining the Royalty Term and whether a Royalty is owed on a particular Product pursuant to Section 5.5 of this Agreement.

Joint Patent Rights. Subject to Section 6.2.1(d), in the event the Parties make any Joint Invention (a) Lillyexcluding a Covered SMIP Improvement), at Lilly’s expensethe Joint Patent Committee shall promptly meet to discuss and determine whether to seek patent protection thereon. If the Joint Patent Committee decides to seek patent protection on such Joint Invention, then Wyeth shall have the first right primary obligation to control the preparationprepare, filingfile, prosecution prosecute and maintenance of maintain any corresponding Joint Patent RightsRights throughout the Territory using patent counsel mutually agreeable to the Parties, such agreement not to be unreasonably withheld. Lilly Wyeth shall keep Zymeworks reasonably advised give Trubion a reasonable opportunity to review and comment on the text of any patent application with respect to such Joint Patent Right before filing, shall consult with Trubion with respect thereto, shall reasonably consider and address any of Trubion's comments, and shall supply Trubion with a copy of each such patent application as filed, together with notice of its filing date and serial number. Wyeth shall keep Trubion advised of the status of the filingactual and prospective patent filings (including, prosecution and maintenance without limitation, the grant of the any Joint Patent Rights and Rights), shall provide copies of material Trubion with a reasonable opportunity to comment on all correspondence received from and all proposed submissions to be made to any government patent office in any Major Market or authority related to the filing, prosecution and maintenance of the Joint Patent Rights to Zymeworks for review and comment. Such copies shall be provided in advance of submission to the extent reasonably practicable. Lilly shall take into consideration any comments from Zymeworks; provided, however, that the Parties acknowledge and agree that if there is any dispute between the Parties regarding such patent mattersfilings, Lilly’s decision shall be finalconsult with Trubion with respect thereto, and shall reasonably consider and address any of Trubion's comments on such correspondence and submissions. Lilly Trubion shall promptly give notice to Zymeworks reimburse Wyeth for *** of the grantout-of-pocket expenses incurred by Wyeth in connection with preparing, lapsefiling, revocation, surrender, invalidation or abandonment of any Joint Patent Rights. (b) Lilly may elect not to file or to cease prosecution or maintenance of Joint Patent Rights on a country-by-country basis, prosecuting and if it does so, Lilly shall give timely notice to Zymeworks. Zymeworks may by notice to Lilly assume filing for, prosecution or maintenance of maintaining such Joint Patent Rights at Zymeworks’ expense(other than out-of-pocket expenses for inventorship determinations and inventorship disputes), in which case Lilly shall promptly assign reimbursement will be made within *** of receiving invoices, such invoices to Zymeworks all of its rights, title and interest (except as provided below) in be submitted by Wyeth no more often than once per Calendar Quarter and to such Joint Patents, and such Joint Patents shall no longer be subject to the exclusive licenses set forth in Section 2.1; provided, however, the Parties acknowledge and agree that Lilly shall still retain its joint ownership rights in such Joint Patents and, therefore, shall retain the right to use and otherwise exploit such Joint Patent Rights in a manner consistent with its joint ownership interest in such Joint Patent Rights; and provided further that claims within such Joint Patent Rights shall remain within the definition of Valid Patent Claim (subject to the limitation set forth in such definition) for purposes of determining the Royalty Term and whether a Royalty is owed on a particular Product pursuant to Section 5.5 of this Agreement.be

Joint Patent Rights. (a) LillyXXX, at Lilly’s its expense, shall have the first right to control the preparation, filing, prosecution and maintenance of Joint Patent RightsRights using patent counsel reasonably acceptable to Zymeworks. Lilly XXX shall keep Zymeworks reasonably advised with respect to the status of the filing, prosecution and maintenance of the Joint Patent Rights and shall provide copies of material submissions to any patent office in any Major Market related to the filing, prosecution and maintenance of the Joint Patent Rights to Zymeworks for review and comment. Such copies shall be provided in advance of submission comment at least [...***...] prior to the extent reasonably practicablesubmission thereof. Lilly XXX shall take into consideration any comments from Zymeworks; providedZymeworks and for so long as Zymeworks is developing or commercializing a product that incorporates an antibody or antibody analogue that incorporates a Collaboration Sequence Pair, however, XXX shall incorporate such comments in good faith with respect to any Joint Patent Rights that the Parties acknowledge and agree that if there is any dispute between the Parties regarding cover such patent matters, Lilly’s decision shall be finalCollaboration Sequence Pair. Lilly XXX shall promptly give notice to Zymeworks of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent Rights.. 75 (b) Lilly XXX may elect not to file or to cease prosecution or maintenance of Joint Patent Rights on a country-by-country basis, and if it does so, Lilly XXX shall give timely (but not less than [...***...] prior to any applicable filing, submission or payment date) notice to Zymeworks. Zymeworks may by notice to Lilly XXX assume filing for, prosecution or maintenance of such Joint Patent Rights at Zymeworks’ expense, in which case Lilly XXX shall promptly assign to Zymeworks all of its rights, title and interest (except as provided below) in and to such Joint Patents, and such Joint Patents shall no longer be subject to the exclusive licenses set forth in Section 2.1; provided, however, the Parties acknowledge and agree that Lilly shall still retain its joint ownership rights in such Joint Patents and, therefore, shall retain the right to use and otherwise exploit such Joint Patent Rights in a manner consistent with its joint ownership interest in such Joint Patent Rights; and provided further that claims within such Joint Patent Rights shall remain within the definition of Valid Patent Claim (subject to the limitation set forth in such definition) for purposes of determining the Royalty Term and whether a Royalty is owed on a particular Product pursuant to Section 5.5 of this Agreement.. 76

Joint Patent Rights. (a) Lilly, at Lilly’s expense, Perception shall have the first right right, but not the obligation, to control Prosecute Joint Patent Rights in the preparationOtsuka Territory and in all other countries in which the Parties mutually agree to Prosecute Joint Patent Rights (such other countries, filing, prosecution and maintenance “Mutually Selected Countries”) using patent counsel mutually agreed to by the Parties. Perception shall keep Otsuka informed of material progress with regard to Prosecution of Joint Patent RightsRights in the Otsuka Territory and all Mutually Selected Countries and shall provide Otsuka (or have provided to Otsuka) all filings and material correspondence related thereto within a reasonable time after the receipt or prior to the filing of such documents to allow Otsuka and its patent counsel to be able to review and provide comments to Perception and its patent counsel regarding the timing for filing and the content of such application, amendment, submission, response or other documents relating to Joint Patent Rights in the Otsuka Territory and Mutually Selected Countries, provided that such review and comment shall not delay the Prosecution. Lilly Perception shall keep Zymeworks reasonably advised consult with, and consider in good faith the comments, requests and suggestions of, Otsuka with respect to the status its Prosecution of the filing, prosecution and maintenance of the Joint Patent Rights in the Otsuka Territory and shall provide copies of material submissions to any patent office in any Major Market related to the filing, prosecution and maintenance of the Joint Patent Rights to Zymeworks for review and comment. Such copies shall be provided in advance of submission to the extent reasonably practicable. Lilly shall take into consideration any comments from Zymeworks; provided, however, that the Parties acknowledge and agree that if there is any dispute between the Parties regarding such patent matters, Lilly’s decision shall be final. Lilly shall promptly give notice to Zymeworks of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent RightsMutually Selected Countries. (b) Lilly may elect not If Perception intends to file abandon, forfeit or to otherwise cease prosecution or maintenance Prosecution of any Joint Patent Rights on a country-by-country basisRight in the Otsuka Territory or any Mutually Selected Country, and if it does so, Lilly Perception shall give timely provide reasonable prior written notice to Zymeworks. Zymeworks may by Otsuka of such intention (which notice shall, to the extent possible, be given at least [***] before such Patent Right would become abandoned or forfeited) and, in that event, Otsuka may, upon written notice to Lilly Perception, elect to assume filing for, prosecution or maintenance Prosecution of such Joint Patent Rights at Zymeworks’ expenseRight in such country. If Otsuka elects to assume Prosecution of such Joint Patent Right in such country, in which case Lilly (i) Perception shall promptly assign to Zymeworks all of its rightsright, title and interest (except as provided below) in and to such Joint PatentsPatent Right in such country to Otsuka [***], and (ii) Otsuka shall Prosecute such Joint Patents Patent Right (in the name of Otsuka only) in such country [***]; provided that if Perception notifies Otsuka at a later date of its desire to license such Patent Right, the Parties shall no negotiate in good faith a non-exclusive, royalty-bearing license to Perception under such Patent Right on commercially reasonable terms; provided, further, that if the Parties are unable to agree on such commercially reasonable terms within [***] following Otsuka’s receipt of Perception’s notice (or such longer period as the Parties may agree), then the matter shall be subject to resolution in accordance with Section 14.3. For clarity, if Otsuka does not elect to assume Prosecution of such Joint Patent Right, Perception will have the exclusive licenses set forth right to cease the Prosecution of such Joint Patent Right in Section 2.1such country. (c) With respect to any Joint Patent Right that Perception is Prosecuting in any Mutually Selected Country, Otsuka may at any time give written notice to Perception that Otsuka does not wish to remain a joint owner of such Joint Patent Right in such country and, at such time, Otsuka shall assign all of its right, title and interest in and to such Joint Patent Right in such country to Perception; provided that if Otsuka notifies Perception at a later date of its desire to license such Patent Right, the Parties shall negotiate in good faith a non-exclusive, royalty-bearing license to Otsuka under such Patent Right on commercially reasonable terms; provided, howeverfurther, that if the Parties are unable to agree on such commercially reasonable terms within [***] following Perception’s receipt of Otsuka’s notice (or such longer period as the Parties may agree), then the matter shall be subject to resolution in accordance with Section 14.3. Thereafter, Perception shall have the sole right, but not the obligation, to Prosecute such Patent Right in the name of Perception only in such country [***]. (d) [***]. (e) If a Party wishes to Prosecute a Joint Patent Right in a country other than the Otsuka Territory or any Mutually Selected Country, such Party shall notify the other Party and, unless the other Party elects to include such country in the Mutually Selected Countries, then (i) the other Party shall assign all of its right, title and interest in and to such Joint Patent Right in such country to the Party that wishes to Prosecute such Joint Patent Right (the “Prosecuting Party”), and (ii) the Prosecuting Party will have the sole right to Prosecute such Patent Right in the name of the Prosecuting Party only in such country [***]; provided that if the other Party notifies the Prosecuting Party at a later date of its desire to license such Patent Right, the Parties acknowledge and shall negotiate in good faith a non-exclusive, royalty-bearing license to the other Party under such Patent Right on commercially reasonable terms; provided, further, that if the Parties are unable to agree that Lilly on such commercially reasonable terms within [***] following the Prosecuting Party’s receipt of the other Party’s notice (or such longer period as the Parties may agree), then the matter shall still retain its joint ownership rights in such Joint Patents and, therefore, shall retain the right to use and otherwise exploit such Joint Patent Rights in a manner consistent with its joint ownership interest in such Joint Patent Rights; and provided further that claims within such Joint Patent Rights shall remain within the definition of Valid Patent Claim (be subject to the limitation set forth resolution in such definition) for purposes of determining the Royalty Term and whether a Royalty is owed on a particular Product pursuant to accordance with Section 5.5 of this Agreement14.3.