Joint Patents. Subject to Section 9.4.1(a) (Product-Specific Patents and Genzyme Program Patents) and Section 9.4.1(b) (Licensed Product Patents), with respect to any Joint Patent (other than Product-Specific Patents and Licensed Product Patents), the JPC will designate one Party (the “Responsible Party”) who will have primary responsibility for the preparation, filing, prosecution and maintenance of any such Joint Patent in the Territory (in both Genzyme’s and Isis’ name), using patent counsel selected by the JPC or otherwise agreed by the Parties. If the JPC has disbanded, the Parties will mutually agree on a Responsible Party. Each Party will assist the Responsible Party in the preparation, filing, prosecution and maintenance of such Joint Patents. The Responsible Party will consult with and keep the other Party (through the JPC if possible) informed of important issues relating to the preparation, filing, prosecution and maintenance of the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to such preparation, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent), the Responsible Party will notify the other Party at least sixty (60) days prior to any deadline that, if missed, would materially prejudice the Joint Patent, and the other Party will have the right to prepare, file, prosecute and maintain such Patent. The Parties will share equally the reasonable costs and expenses of the preparation, filing, prosecution and maintenance of such Joint Patents (other than Product-Specific Patents and Licensed Product Patents), and such costs and expenses will be considered Program Costs. Neither Party will make any statements or omissions or take any other action during prosecution or enforcement of any Joint Patent (other than Product-Specific Patents and Licensed Product Patents) which admits or concedes that any of the Licensed Patents (or any Product-Specific Patent) is invalid or unenforceable, which adversely affects or limits the scope of any claims in any such Patent, or which adversely affects the other Party’s rights under this Agreement in any way, without the prior written consent of the other Party. For clarity, this Section 9.4.1(d) does not apply to Joint Patents that are Product-Specific Patents or Licensed Product Patents, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical Patents.
Appears in 2 contracts
Samples: License and Co Development Agreement (Isis Pharmaceuticals Inc), License and Co Development Agreement (Genzyme Corp)
Joint Patents. Subject The parties shall mutually agree, on a Joint Invention-by-Joint Invention basis, which of the parties will have the first right and responsibility to Section 9.4.1(a) (Product-Specific prepare, file, prosecute and maintain Joint Patents claiming a Joint Invention. The party with such first right and Genzyme Program Patents) and Section 9.4.1(b) (Licensed Product Patents), with respect to any Joint Patent (other than Product-Specific Patents and Licensed Product Patents), the JPC will designate one Party responsibility (the “Responsible First Party”) who will have primary responsibility for shall use counsel reasonably acceptable to the preparationother party, filingand, prosecution and maintenance of any such Joint Patent in the Territory (in both Genzyme’s and Isis’ name), using patent counsel selected by the JPC or unless otherwise agreed by the Parties. If the JPC has disbandedparties in writing, the Parties will mutually agree on a Responsible Party. Each Party will assist parties shall share equally the Responsible Party in the preparationreasonable and documented expenses of preparing, filing, prosecution prosecuting and maintenance of maintaining such Joint Patents. The Responsible First Party will shall consult with and keep the other Party (through the JPC if possible) informed of important issues relating party as to the preparation, filing, prosecution and maintenance of the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to such preparation, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent), the Responsible Party will notify the other Party at least sixty (60) days reasonably prior to any deadline that, if missed, would materially prejudice the Joint Patentor action with any patent office, and shall furnish to the other Party will have the right to prepare, file, prosecute party copies of all relevant drafts and maintain documents reasonably in advance of such Patentconsultation. The Parties will share equally First Party shall keep the reasonable costs and expenses other party reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of such Joint Patents (other than Product-Specific Patents and Licensed Product Patents), and shall provide to the other party copies of all material patent office submissions within a reasonable amount of time following submission thereof by such costs and expenses will be considered Program Costsparty. Neither In the event that the First Party will make any statements desires to abandon or omissions or take any other action during cease prosecution or enforcement maintenance of any such Joint Patent, the First Party shall provide written notice to the other party of such intention to abandon promptly after the First Party makes such determination (which notice shall be given no later than 90 days (or for Xxxxx-Xxxxxx actions, or the equivalent thereof, 30 days) prior to the next deadline for any action that must be taken with respect to such Joint Patent (in the relevant patent office). In such case, the other party shall have the right, in its discretion, exercisable upon written notice to the first party delivered no later than Product-Specific Patents 30 days after receipt of notice from the first party, to assume responsibility for prosecution and Licensed Product Patents) which admits or concedes that any maintenance of the Licensed Patents (or any Product-Specific Patent) is invalid or unenforceable, which adversely affects or limits the scope of any claims in any such Joint Patent, or which adversely affects the other Party’s rights under this Agreement in any way, without the prior written consent at its sole cost and expense and by counsel of the other Party. For clarity, this Section 9.4.1(d) does not apply to Joint Patents that are Product-Specific Patents or Licensed Product Patents, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical Patentsits own choice.
Appears in 1 contract
Joint Patents. Subject to Section 9.4.1(a) (Product-Specific Patents and Genzyme Program Patents) and Section 9.4.1(b) (Licensed Product Patents), with respect to any Joint Patent (other than Product-Specific Patents and Licensed Product Patents), the JPC will designate one Party (the “Responsible Party”) who Arena will have primary responsibility the sole responsible for the preparation, filing, prosecution and maintenance of and conducting or defending any such interferences or similar proceedings and in obtaining and maintaining any patent extensions, supplementary protection certificates and the like with respect to the Arena Joint Patent in Patents. J&J will have the Territory (in both Genzyme’s and Isis’ name), using patent counsel selected by the JPC or otherwise agreed by the Parties. If the JPC has disbanded, the Parties will mutually agree on a Responsible Party. Each Party will assist the Responsible Party in sole responsible for the preparation, filing, prosecution and maintenance of such and conducting or defending any interferences or similar proceedings and in obtaining and maintaining any patent extensions, supplementary protection certificates and the like with respect to the J&J Joint Patents. The Responsible Party will consult with and keep the other Party (through the JPC if possible) informed of important issues relating to the preparation, filing, prosecution and maintenance of conducing the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to such preparation, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance Patent Prosecution of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent), the Responsible Party will notify consult with the other Party at least sixty as to the prosecution strategy and will keep such Party informed as to the progress and all activities relating to the Joint Patent Prosecution, including providing to the Party copies of all proposed filings and patent office responses and of all office actions and other material communications from patent offices relating to such prosecution efforts a reasonable time in advance of any proposed filing or required response, and such Party will have the right to comment on any such filings and responses. The prosecuting Party will consider in good faith the requests and suggestions of the other Party with respect to such filings or responses and the strategies and activities relating to such Joint Patent Prosecution. If the prosecuting Party intends to abandon any Joint Patent that it is responsible for, such Party will provide reasonable prior written notice to the other Party of such intention to abandon or decline responsibility (60) which notice will, in any event, be given no later than 60 days prior to the next deadline for any deadline that, if missed, would materially prejudice action that may be taken with respect to such Joint Patent with the Joint PatentU.S. Patent & Trademark Office or any foreign patent office), and the other Party will have the right right, at its expense, to prepare, file, prosecute prosecute, and maintain such Joint Patent. The Parties will share equally Except as set forth below, *********************** *********** **************************************. As to any particular Joint Patent in a country or jurisdiction that *********************************************************** for the reasonable costs and expenses of the preparation, filing, ongoing prosecution and and/or maintenance of such Joint Patents (other than Product-Specific Patents and Licensed Product Patents)Patent, and such costs and expenses Joint Patent will be considered Program Costs. Neither Party will make any statements or omissions or take any other action during prosecution or enforcement of any Joint Patent (other than Product-Specific Patents and Licensed Product Patents) which admits or concedes that any of the Licensed Patents (or any Product-Specific Patent) is invalid or unenforceable, which adversely affects or limits excluded from the scope of any claims all license rights granted to J&J under Section 5.1, J&J will effect the assignment of all of its right, title and interest in any such Joint Patent to Arena by executing all necessary documents, and J&J will lose all rights in the applicable country or jurisdiction under such Joint Patent, or which adversely affects the other Party’s rights under this Agreement in any way, without the prior written consent of the other Party. For clarity, this Section 9.4.1(d) does not apply to Joint Patents that are Product-Specific Patents or Licensed Product Patents, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical Patents.
Appears in 1 contract
Samples: Collaboration and License Agreement (Arena Pharmaceuticals Inc)
Joint Patents. Subject to Section 9.4.1(a5.8:
(i) (Product-Specific Patents and Genzyme Program Patents) and Section 9.4.1(b) (Licensed Product Patents), with With respect to any each Joint Patent (other than Product-Specific Patents Invention, as between AVEO and Licensed Product Patents)Partner, the JPC will designate one Party (the “Responsible Party”) who will have primary responsibility for the preparation, filing, prosecution and maintenance of any such Joint Patent in the Territory (in both Genzyme’s and Isis’ name), using patent counsel selected by the JPC or otherwise agreed by the Parties. If the JPC has disbanded, the Parties will mutually agree on a Responsible Party. Each Party will assist the Responsible Party in the preparation, filing, prosecution and maintenance of such Joint Patents. The Responsible Party will consult with and keep the other Party (through the JPC if possible) informed of important issues relating to the preparation, filing, prosecution and maintenance of the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to such preparation, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent), the Responsible Party will notify the other Party at least sixty (60) days prior to any deadline that, if missed, would materially prejudice the Joint Patent, and the other Party will have the right to Partner shall prepare, file, prosecute and maintain the corresponding Joint Patents in the Partner Territory, and AVEO shall prepare, file, prosecute and maintain the corresponding Joint Patents in the AVEO Territory and KHK Territory provided that the Parties shall mutually agree on which Party shall file the initial patent application disclosing any Joint Invention and shall mutually agree as to the content and scope of such Patentfirst filing and shall share the costs equally. The Parties will share equally the reasonable costs and expenses Partner shall be responsible for paying one hundred percent (100%) of the preparation, filing, prosecution and maintenance costs with respect to Joint Patents in the Partner Territory and AVEO shall be responsible for paying one hundred percent (100%) of the prosecution and maintenance costs with respect to Joint Patents in the AVEO Territory and KHK Territory.
(ii) AVEO shall have the right to review and comment upon Partner’s prosecution and maintenance of such Joint Patents (other than Product-Specific Patents and Licensed Product Patents)in the Partner Territory, and Partner shall have the right to review and comment upon AVEO’s prosecution and maintenance of Joint Patents in the AVEO Territory and KHK Territory. The Party responsible for prosecution and maintenance (the “Prosecuting Party”) of Joint Patents shall provide (or have provided by its patent attorney) to the other Party, a copy of each substantive communication received from any patent authority, and a copy of each proposed submission to a patent authority regarding a Joint Patent reasonably in advance (but no less than thirty (30) days for the other Party’s review) of making such costs and expenses will be considered Program Costsfiling. Neither Furthermore, the Prosecuting Party will make any statements or omissions or take any agrees to: (A) keep the other action during prosecution or enforcement Party reasonably informed with respect to such activities; (B) consult with the other Party regarding such matters, including the final abandonment of any Joint Patent claims; and (other than Product-Specific Patents and Licensed Product PatentsC) which admits or concedes that any of the Licensed Patents (or any Product-Specific Patent) is invalid or unenforceable, which adversely affects or limits the scope of any claims in any such Patent, or which adversely affects reasonably consider the other Party’s rights under this Agreement in comments.
(iii) If the Prosecuting Party determines to abandon or not maintain any wayJoint Patent, without then such Prosecuting Party shall provide the other Party with at least sixty (60) days’ prior written consent notice of such determination (or such other period of time reasonably necessary to allow the other PartyParty to assume such responsibilities). For clarityIf the other Party requests, this Section 9.4.1(d) does not apply the other Party shall have the right, at its expense, to Joint Patents that are Product-Specific Patents or Licensed Product Patentscontrol the filing, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical Patents.prosecution and
Appears in 1 contract
Joint Patents. (i) Subject to this Section 9.4.1(a) (Product-Specific Patents and Genzyme Program Patents) and Section 9.4.1(b) (Licensed Product Patents10.2(b), with respect Salubris shall have the first right, but not the obligation, to any Joint Patent (other than Product-Specific Patents and Licensed Product Patents), the JPC will designate one Party (the “Responsible Party”) who will have primary responsibility for control the preparation, filing, prosecution prosecution, and maintenance (including any interferences, reissue proceedings, reexaminations, inter partes review, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of validity or enforceability challenges) of the Joint Patents in the Territory, at its own expense and using counsel of its own choice, and Viracta shall have the first right, but not the obligation, to control the preparation, filing, prosecution, and maintenance (including any interferences, reissue proceedings, reexaminations, inter partes review, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of validity or enforceability challenges) of the Joint Patents outside the Territory, at its own expense and using counsel of its own choice. Each Party shall keep the other Party informed of the progress with regard to the preparation, filing, prosecution, and maintenance of the Joint Patents, reasonably in advance for such other Party to be able to review any material documents, including content, timing, and jurisdiction of the filing of such Joint Patents, and the filing Party shall consult with, and consider in good faith the requests and suggestions of, the other Party with respect to strategies for filing and prosecuting the Joint Patents.
(ii) In the event that the filing Party desires to abandon or cease prosecution or maintenance of any Joint Patent, such Party shall provide reasonable prior written notice to the other Party of such intention to abandon (which notice shall, to the extent possible, be given no later than [***] days prior to the next deadline for any action that must be taken with respect to any such Joint Patent in the Territory relevant patent office). In such case, upon written notice from [***] Certain confidential information contained in this document, marked by brackets, has been omitted because it is both (i) not material and (ii) would be competitively harmful if publicly disclosed. such other Party to the filing Party no later than [***] days after such notice from the filing Party, such other Party may elect, in both Genzyme’s and Isis’ name)its sole discretion, using patent counsel selected by the JPC or otherwise agreed by the Parties. If the JPC has disbanded, the Parties will mutually agree on a Responsible Party. Each Party will assist the Responsible Party in the preparation, filing, to continue prosecution and maintenance of such Joint Patents. The Responsible Party will consult with Patent, at its direction and keep the other Party (through the JPC if possible) informed of important issues relating to the preparation, filing, prosecution and maintenance of the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to such preparation, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent), the Responsible Party will notify the other Party at least sixty (60) days prior to any deadline that, if missed, would materially prejudice the Joint Patentexpense, and the filing Party shall execute such documents and perform such acts, at such other Party’s expense, as may be reasonably necessary to allow such other Party will have to continue the right to prepare, file, prosecute and maintain such Patent. The Parties will share equally the reasonable costs and expenses of the preparation, filing, prosecution and maintenance of such Joint Patents (Patent. If such other than Product-Specific Patents Party does not provide such election within [***] days after such notice from the filing Party, the filing Party may, in its sole discretion, continue prosecution and Licensed Product Patents), and maintenance of such costs and expenses will be considered Program Costs. Neither Party will make any statements or omissions or take any other action during prosecution or enforcement of any Joint Patent (other than Product-Specific Patents or discontinue prosecution and Licensed Product Patents) which admits or concedes that any maintenance of the Licensed Patents (or any Product-Specific such Joint Patent) is invalid or unenforceable, which adversely affects or limits the scope of any claims in any such Patent, or which adversely affects the other Party’s rights under this Agreement in any way, without the prior written consent of the other Party. For clarity, this Section 9.4.1(d) does not apply to Joint Patents that are Product-Specific Patents or Licensed Product Patents, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical Patents.
Appears in 1 contract
Samples: Exclusive Collaboration and License Agreement (Sunesis Pharmaceuticals Inc)
Joint Patents. Subject to Section 9.4.1(a5.8:
(i) With respect to each Joint Invention, as between AVEO and Partner, Partner shall prepare, file, prosecute and maintain the corresponding Joint Patents in the Partner Territory, and AVEO shall prepare, file, prosecute and maintain the corresponding Joint Patents in the AVEO Territory and KHK Territory provided that the Parties shall mutually agree on which Party shall file the initial patent application disclosing any Joint Invention and shall mutually agree as to the content and scope of such first filing and shall share the costs equally. Partner shall be responsible for paying one hundred percent (Product-Specific Patents 100%) of the prosecution and Genzyme Program Patents) and Section 9.4.1(b) (Licensed Product Patents), maintenance costs with respect to any Joint Patent Patents in the Partner Territory and AVEO shall be responsible for paying one hundred percent (other than Product-Specific 100%) of the prosecution and maintenance costs with respect to Joint Patents in the AVEO Territory and Licensed Product Patents), KHK Territory.
(ii) AVEO shall have the JPC will designate one Party (the “Responsible Party”) who will have primary responsibility for the preparation, filing, right to review and comment upon Partner’s prosecution and maintenance of any such Joint Patent Patents in the Territory (in both GenzymePartner Territory, and Partner shall have the right to review and comment upon AVEO’s and Isis’ name), using patent counsel selected by the JPC or otherwise agreed by the Parties. If the JPC has disbanded, the Parties will mutually agree on a Responsible Party. Each Party will assist the Responsible Party in the preparation, filing, prosecution and maintenance of such Joint PatentsPatents in the AVEO Territory and KHK Territory. The Responsible Party will consult with responsible for prosecution and maintenance (the “Prosecuting Party”) of Joint Patents shall provide (or have provided by its patent attorney) to the other Party, a copy of each substantive communication received from any patent authority, and a copy of each proposed submission to a patent authority regarding a Joint Patent reasonably in advance (but no less than thirty (30) days for the other Party’s review) of making such filing. Furthermore, the Prosecuting Party agrees to: (A) keep the other Party reasonably informed with respect to such activities; (through B) consult with the JPC if possibleother Party regarding such matters, including the final abandonment of any Joint Patent claims; and (C) informed reasonably consider the other Party’s comments.
(iii) If the Prosecuting Party determines to abandon or not maintain any Joint Patent, then such Prosecuting Party shall provide the other Party with at least sixty (60) days’ prior written notice of important issues relating such determination (or such other period of time reasonably necessary to allow the preparationother Party to assume such responsibilities). If the other Party requests, the other Party shall have the right, at its expense, to control the filing, prosecution and maintenance of the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to such preparationPatent that would otherwise have gone abandoned, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent), the Responsible Party will notify the other Party at least sixty (60) days prior to any deadline that, if missed, would materially prejudice the Joint Patent, and the other Party will have the right to prepare, file, prosecute and maintain such Patent. The Parties will share equally the reasonable costs and expenses of the preparation, filing, prosecution and maintenance of such Joint Patents (other than Product-Specific Patents and Licensed Product Patents), and such costs and expenses will be considered Program Costs. Neither Party will make any statements or omissions or take any other action during prosecution or enforcement of any Joint Patent (other than Product-Specific Patents and Licensed Product Patents) which admits or concedes that without affecting any of the Licensed Patents (or any Product-Specific Patent) is invalid or unenforceable, which adversely affects or limits the scope of any claims other financial terms set forth in any such Patent, or which adversely affects the other Party’s rights under this Agreement in any way, without the prior written consent of the other Party. For clarity, this Section 9.4.1(d) does not apply to Joint Patents that are Product-Specific Patents or Licensed Product Patents, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical PatentsAgreement.
Appears in 1 contract
Joint Patents. Subject The parties shall mutually agree, on a Joint Invention-by-Joint Invention basis, which of the parties will have the first right and responsibility to Section 9.4.1(a) prepare, file, prosecute and maintain Joint Patents claiming a Joint Invention (Product-Specific Patents the party with such first right and Genzyme Program Patents) and Section 9.4.1(b) (Licensed Product Patentsresponsibility, the “First Party”); provided, however, that Company shall be the First Party with respect to any Joint Patent (that claims or discloses any CAB ACT Preparation or CAB ACT Treatment. The First Party shall use counsel reasonably acceptable to the other than Product-Specific Patents and Licensed Product Patents)party, the JPC will designate one Party (the “Responsible Party”) who will have primary responsibility for the preparationand, filing, prosecution and maintenance of any such Joint Patent in the Territory (in both Genzyme’s and Isis’ name), using patent counsel selected by the JPC or unless otherwise agreed by the Parties. If the JPC has disbandedparties in writing, the Parties will mutually agree on a Responsible Party. Each Party will assist parties shall share equally the Responsible Party in the preparationreasonable and documented expenses of preparing, filing, prosecution prosecuting and maintenance of maintaining such Joint Patents. The Responsible First Party will shall consult with and keep the other Party (through the JPC if possible) informed of important issues relating party as to the preparation, filing, prosecution and maintenance of the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to such preparation, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent), the Responsible Party will notify the other Party at least sixty (60) days reasonably prior to any deadline that, if missed, would materially prejudice the Joint Patentor action with any patent office, and shall furnish to the other Party will have the right to prepare, file, prosecute party copies of all relevant drafts and maintain documents reasonably in advance of such Patentconsultation. The Parties will share equally First Party shall keep the reasonable costs and expenses other party reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of such Joint Patents (other than Product-Specific Patents and Licensed Product Patents), and shall provide to the other party copies of all material patent office submissions within a reasonable amount of time following submission thereof by such costs and expenses will be considered Program Costsparty. Neither In the event that the First Party will make any statements desires to abandon or omissions or take any other action during cease prosecution or enforcement maintenance of any such Joint Patent, the First Party shall provide written notice to the other party of such intention to abandon promptly after the First Party makes such determination (which notice shall be given no later than 90 days (or for Xxxxx-Xxxxxx actions, or the equivalent thereof, 30 days) prior to the next deadline for any action that must be taken with respect to such Joint Patent (in the relevant patent office). In such case, the other party shall have the right, in its discretion, exercisable upon written notice to the first party delivered no later than Product-Specific Patents 30 days after receipt of notice from the first party, to assume responsibility for prosecution and Licensed Product Patents) which admits or concedes that any maintenance of the Licensed Patents (or any Product-Specific Patent) is invalid or unenforceable, which adversely affects or limits the scope of any claims in any such Joint Patent, or which adversely affects the other Party’s rights under this Agreement in any way, without the prior written consent at its sole cost and expense and by counsel of the other Party. For clarity, this Section 9.4.1(d) does not apply to Joint Patents that are Product-Specific Patents or Licensed Product Patents, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical Patentsits own choice.
Appears in 1 contract
Joint Patents. Subject (i) As between the Parties, (A) GSK shall have the first right, at its option and subject to Section 9.4.1(a) 7.2(c)(ii), to control the preparation, filing, prosecution, defense (Productincluding any declaratory judgment, interferences, reissue proceedings, derivation proceedings, reexaminations, oppositions, revocation actions, cancellations, inter partes review, post-Specific Patents grant review and Genzyme Program Patentsany similar proceedings before any Governmental Body in the GSK Territory) and maintenance of all Joint Patents in the GSK Territory, at its sole cost and expense and (B) Scynexis shall have the first right, at its option and subject to Section 9.4.1(b) (Licensed Product Patents7.2(c)(ii), with respect to control the preparation, filing, prosecution defense (including any declaratory judgment, interferences, reissue proceedings, derivation proceedings, reexaminations, oppositions, revocation actions, cancellations, inter partes review, post-grant review and any similar proceedings before any Governmental Body in the Excluded Territory) and maintenance of any Joint Patent (other than Product-Specific Patents in the Excluded Territory, at its sole cost and Licensed Product Patentsexpense. Notwithstanding the foregoing, GSK shall have the first right, at its option and subject to Section 7.2(c)(ii), the JPC will designate one Party (the “Responsible Party”) who will have primary responsibility for to control the preparation, filing, prosecution and maintenance of any initial applications for Joint Patents (i.e., any provisional Patent application and any international Patent Cooperation Treaty (PCT) Patent application); provided, however, that GSK shall confer with Scynexis and consider in good faith Scynexis’s comments prior to filing applications for such initial Joint Patents, provided further that Scynexis shall provide such comments within [***] ([***]) (or a shorter period reasonably designated by GSK if [***] ([***]) is not practicable given the filing deadline) of receiving the draft filings from GSK.
(ii) Either Party (the “Prosecuting Party”) may abandon or cease prosecution or maintenance of any Joint Patent in any jurisdiction within its applicable Territory in its sole discretion; provided that, if the Prosecuting Party determines to abandon or cease prosecution or maintenance of any Joint Patent in any jurisdiction within its applicable Territory, it shall provide reasonable prior written notice to the other Party (the “Non‑Prosecuting Party”) of such intention to abandon (which notice shall, to the extent possible, be given no later than [***] ([***]) prior to the next deadline for any action that must be taken with respect to any such Joint Patent in with respect to the Territory relevant patent authority). In such case, upon the Non-Prosecuting Party’s written election provided no later than [***] (in both Genzyme’s and Isis’ name), using patent counsel selected by [***]) after such notice from the JPC or otherwise agreed by the Parties. If the JPC has disbandedProsecuting Party, the Parties will mutually agree on a Responsible Party. Each Non-Prosecuting Party will assist the Responsible Party in the preparation, filing, may assume prosecution and maintenance of such Joint PatentsPatent at its sole cost and expense. The Responsible If the Non-Prosecuting Party will consult with and keep the other Party (through the JPC if possible) informed of important issues relating to the preparation, filing, prosecution and maintenance of the Joint Patents (other than Product-Specific Patents or Licensed Product Patents) and will furnish the other Party (through the JPC if possible) with copies of documents relevant to does not provide such preparation, filing, prosecution or maintenance in sufficient time prior to filing such document or making any payment due thereunder to allow for review and comment by the other Party and, to the extent possible in the reasonable exercise of its discretion, election within [***] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with ([***]) after such notice from the Commission. the Responsible Party will incorporate all such comments. If the Responsible Party decides to discontinue the preparation, filing, prosecution or maintenance of a Joint Patent (other than a Product-Specific Patent or Licensed Product Patent)Prosecuting Party, the Responsible Prosecuting Party will notify the other Party at least sixty (60) days prior to any deadline thatmay, if missedin its sole discretion, would materially prejudice the Joint Patent, and the other Party will have the right to prepare, file, prosecute and maintain such Patent. The Parties will share equally the reasonable costs and expenses of the preparation, filing, continue prosecution and maintenance of such Joint Patents (other than Product-Specific Patents Patent or discontinue prosecution and Licensed Product Patents), and maintenance of such costs and expenses will be considered Program Costs. Neither Party will make any statements or omissions or take any other action during prosecution or enforcement of any Joint Patent (other than Product-Specific Patents and Licensed Product Patents) which admits or concedes that any of the Licensed Patents (or any Product-Specific Patent) is invalid or unenforceable, which adversely affects or limits the scope of any claims in any such Patent, or which adversely affects the other Party’s rights under this Agreement in any way, without the prior written consent of the other Party. For clarity, this Section 9.4.1(d) does not apply to Joint Patents that are Product-Specific Patents or Licensed Product Patents, which are governed by Section 9.1 (Product-Specific Patents) and Section 9.4.1(a) and Section 9.4.1(b) above, but does apply to Joint Patents that are Isis Core Technology Patents or Isis Manufacturing and Analytical Patents.
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