Common use of Jointly Owned Clause in Contracts

Jointly Owned. In the event of any invention jointly owned by the parties under [*] above, ABX shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and maintain all patent applications (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming any XenoMouse Animals or any uses thereof, and GNE shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and maintain all patent applications and patents (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming the Product Antigen, any Antibody or Product and/or its development, manufacture, use or sale. The party having such rights and responsibilities hereunder is referred to as the "Controlling Party". The Controlling Party shall: (i) provide the non-Controlling Party with any patent application filed hereunder by the Controlling Party promptly after such filing; (ii) provide the non-Controlling Party promptly with copies of all substantive communications received from or filed in patent office(s) with respect to such filings; (iii) notify the non-Controlling Party of any interference, opposition, reexamination request, nullity proceeding, appeal or other interparty action and review it with the non-Controlling Party as reasonably requested; and (iv) provide the non-Controlling Party, a reasonable time prior to taking or failing to take any action that would substantially affect the scope of validity of rights under such patent applications or patents thereon (including substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional application, abandoning any patent or not filing or perfecting the filing of any patent application) with notice of such proposed action so that the non-Controlling Party has a reasonable opportunity to review and make comments. If the Controlling Party fails to undertake the filing of a patent application (or continuing or divisional application) within ninety (90) days after a written request from the non-Controlling Party to do so, or if the Controlling Party discontinues the prosecution or maintenance of a patent application or patent, the non-Controlling Party at its expense may, in its discretion, undertake such filing, prosecution or maintenance thereof in which case such patent application thereon shall be solely owned by the non-Controlling Party. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. As to enforcement of jointly-owned patents, including actions against an alleged infringer, the parties hereto shall consult with each other in good faith as to the best manner in which to proceed. The parties agree as a basic principle that in the case of such actions against alleged infringers, the expenses incurred and damages awarded shall be first used to reimburse the costs and expenses (including reasonable attorneys' fees) of the party or parties in the action, second used to reimburse ABX for any amounts ABX is obligated to pay to third parties (if any) in respect of such amount [*] 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. pursuant to applicable ABX In-Licenses, with the remainder for the account of the party or parties that undertake such actions to the extent of their financial participation therein. To the extent that damages are awarded for lost sales or lost profits from the sale of Products, such damages shall be allocated among the parties taking into account royalties that would have been payable to ABX on the sale of such Products. Either party may withdraw from or abandon any jointly-owned patent application or patent hereunder, on reasonable prior written notice to the other party providing a free-of-charge option to assume the prosecution and/or maintenance thereof.

Jointly Owned. In the event of any invention jointly owned by the parties under [*] Section 4.1 above, ABX shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and maintain all patent applications (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming any XenoMouse Animals or any uses thereof, and GNE shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and maintain all patent applications and patents (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming the Product Antigen, any Antibody or Product and/or its development, manufacture, use or sale. The party having such rights and responsibilities hereunder is referred to as the "Controlling Party". The Controlling Party shall: (i) provide the non-Controlling Party with any patent application filed hereunder by the Controlling Party promptly after such filing; (ii) provide the non-Controlling Party promptly with copies of all substantive communications received from or filed in patent office(s) with respect to such filings; (iii) notify the non-Controlling Party of any interference, opposition, reexamination request, nullity proceeding, appeal or other interparty action and review it with the non-Controlling Party as reasonably requested; and (iv) provide the non-Controlling Party, a reasonable time prior to taking or failing to take any action that would substantially affect the scope of validity of rights under such patent applications or patents thereon (including substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional application, abandoning any patent or not filing or perfecting the filing of any patent application) with notice of such proposed action so that the non-Controlling Party has a reasonable opportunity to review and make comments. If the Controlling Party fails to undertake the filing of a patent application (or continuing or divisional application) within ninety (90) days after a written request from the non-Controlling Party to do so, or if the Controlling Party discontinues the prosecution or maintenance of a patent application or patent, the non-Controlling Party at its expense may, in its discretion, undertake such filing, prosecution or maintenance thereof thereof, in which case such patent application and patent thereon shall be solely owned by the non-Controlling Party. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. As to enforcement of jointly-owned patents, including actions against an alleged infringer, the parties hereto shall consult with each other in good faith as to the best manner in which to proceed. The parties agree as a basic principle that in the case of such actions against alleged infringers, the expenses incurred and damages awarded shall be first used to reimburse the costs and expenses (including reasonable attorneys' fees) of the party or parties in the action, second used to reimburse ABX for any amounts ABX is obligated to pay to third parties (if any) in respect of such amount [*] 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. pursuant to applicable ABX In-Licenses, with the remainder for the account of the party or parties that undertake such actions to the extent of their financial participation therein. To the extent that damages are awarded for lost sales or lost profits from the sale of Products, such damages shall be allocated among the parties taking into account royalties that would have been payable to ABX on the sale of such Products. Either party may withdraw from or abandon any jointly-owned patent application or patent hereunder, on reasonable prior written notice to the other party providing a free-of-charge option to assume the prosecution and/or maintenance thereof.

Jointly Owned. In the event of any invention jointly owned by the parties under [*] abovethis Article 6, ABX shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and maintain all patent applications (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming any XenoMouse Animals or any uses thereof, and GNE shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and maintain all patent applications and patents (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming the a Product Antigen, any an Antibody that binds to a Product Antigen or a Product and/or its development, manufacture, use or sale. The party having such rights and responsibilities hereunder is referred to as the "Controlling Party". The Controlling Party shall: (i) provide the non-Controlling Party with any patent application filed hereunder by the Controlling Party promptly after such filing; (ii) provide the non-Controlling Party promptly with copies of all substantive communications received from or filed in patent office(s) with respect to such filings; (iii) notify the non-Controlling Party of any interference, opposition, reexamination request, nullity proceeding, appeal or other interparty action and review it with the non-Controlling Party as reasonably requested; and (iv) provide the non-Controlling Party, Party a reasonable time prior to taking or failing to take any action that would substantially affect the scope of validity of rights under such patent applications or patents thereon (including substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional application, abandoning any patent or not filing or perfecting the filing of any patent application) with notice of such proposed action so that the non-Controlling Party has a reasonable opportunity to review and make comments. If the Controlling Party fails to undertake the filing of a -------------- * 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. patent application (or continuing or divisional application) within ninety (90) days [*] after a written request from the non-Controlling Party to do so, or if the Controlling Party discontinues the prosecution or maintenance of a patent application or patent, the non-Controlling Party at its expense may, in its discretion, undertake such filing, prosecution or maintenance thereof thereof, in which case such patent application and patent thereon shall be solely owned by the non-Controlling Party. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. As to enforcement of jointly-owned patents, including actions against an alleged infringer, the parties hereto shall consult with each other in good faith as to the best manner in which to proceed, provided, however, that with regard to any jointly-owned patent covering a Product, GNE shall have final decision making authority over how to proceed. The parties agree as a basic principle that in In the case of such actions against alleged infringers, the expenses incurred and damages any recovery awarded shall be first used to reimburse the costs and expenses (including reasonable attorneys' fees) of the party or parties in the action, second used to reimburse ABX for action (including any amounts ABX is obligated to pay to third parties (if any) in respect of such amount [*] 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. pursuant to applicable ABX In-LicensesLicenses (or licenses under any Core Third Party Patents)), with the remainder for the account of the party or parties that undertake such actions to the extent of their financial participation therein. To the extent that damages are awarded for lost sales or lost profits from the sale of Products, such damages shall be allocated among the parties taking into account royalties that would have been payable to ABX on the sale of such Products. Either party may withdraw from or abandon any jointly-owned patent application or patent hereunder, on reasonable prior written notice to the other party providing a free-of-charge option to assume the prosecution and/or maintenance thereof.

Jointly Owned. In the event of any invention jointly owned by the parties under [*] abovethis Article 6, ABX shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and maintain all patent applications (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming any XenoMouse Animals or any uses thereof, and GNE shall have the sole right and responsibility (but not the obligation), at its expense, to file, prosecute and -------------- * 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. 18 maintain all patent applications and patents (and to conduct any interferences, oppositions, or reexaminations thereon, and to request any reissues or patent term extensions thereof) claiming the Product a GNE Program Antigen, any an Antibody that binds to a GNE Program Antigen or a Product and/or its development, manufacture, use or sale. The party having such rights and responsibilities hereunder is referred to as the "Controlling Party". The Controlling Party shall: (i) provide the non-Controlling Party with any patent application filed hereunder by the Controlling Party promptly after such filing; (ii) provide the non-Controlling Party promptly with copies of all substantive communications received from or filed in patent office(s) with respect to such filings; (iii) notify the non-Controlling Party of any interference, opposition, reexamination request, nullity proceeding, appeal or other interparty action and review it with the non-Controlling Party as reasonably requested; and (iv) provide the non-Controlling Party, Party a reasonable time prior to taking or failing to take any action that would substantially affect the scope of validity of rights under such patent applications or patents thereon (including substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional application, abandoning any patent or not filing or perfecting the filing of any patent application) with notice of such proposed action so that the non-Controlling Party has a reasonable opportunity to review and make comments. If the Controlling Party fails to undertake the filing of a patent application (or continuing or divisional application) within ninety (90) days after a written request from the non-Controlling Party to do so, or if the Controlling Party discontinues the prosecution or maintenance of a patent application or patent, the non-Controlling Party at its expense may, in its discretion, undertake such filing, prosecution or maintenance thereof thereof, in which case such patent application and patent thereon shall be solely owned by the non-Controlling Party. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. The parties hereto shall assist each other to the extent commercially reasonable in securing intellectual property rights resulting from jointly owned inventions hereunder. As to enforcement of jointly-owned patents, including actions against an alleged infringer, the parties hereto shall consult with each other in good faith as to the best manner in which to proceed. The parties agree as a basic principle that in In the case of such actions against alleged infringers, the expenses incurred and damages any recovery awarded shall be first used to reimburse the costs and expenses (including reasonable attorneys' fees) of the party or parties in the action, second used to reimburse ABX for any amounts ABX is obligated to pay to third parties (if any) in respect of such amount [*] 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. pursuant to applicable ABX In-Licenses, with the remainder for the account of the party or parties that undertake such actions to the extent of their financial participation therein. To the extent that damages are awarded for lost sales or lost profits from the sale of Products, such damages shall be allocated among the parties taking into account royalties that would have been payable to ABX on the sale of such Products. Either party may withdraw from or abandon any jointly-owned patent application or patent hereunder, on reasonable prior written notice to the other party providing a free-of-charge option to assume the prosecution and/or maintenance thereof.