Common use of Licensed Patents and Joint Patents Clause in Contracts

Licensed Patents and Joint Patents. (i) Licensor shall have the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement of any Licensed Patent (including any Patents within the New Compound IP) or any Joint Patent at its own expense and by counsel of its own choice. Licensee shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Licensor and its counsel will reasonably cooperate with Licensee and its counsel in strategizing, preparing, and litigating any such action or proceeding. If Licensor fails to bring any such action or proceeding with respect to infringement of any Licensed Patent or Joint Patent within 90 days following the notice of alleged infringement, Licensee shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. The Parties may mutually agree to transfer control of enforcement of any of the Licensed Patents or Joint Patents from Licensor to Licensee. (ii) Notwithstanding Section 8.3(b)(i), if under Section 8.2(a)(ii) Licensee has taken control of the preparation, filing, prosecution and maintenance of the Elected Patents, Licensee shall have the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement of any Elected Patent (including Licensed Patents or Patents within the New Compound IP or any Joint Patents that are Elected Patents) at its own expense and by counsel of its own choice. Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Licensee and its counsel will reasonably cooperate with Licensor and its counsel in strategizing, preparing, and litigating any such action or proceeding. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. If Licensee fails to bring any such action or proceeding with respect to infringement of any Elected Patent within [***] days following the notice of alleged infringement, Licensor shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Licensee shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. Further, if under Section 8.2(a)(ii) Licensee has taken control of the preparation, filing, prosecution and maintenance of the Elected Patents, each Party shall reasonably cooperate to avoid making statements or taking actions in connection with patent prosecution or litigation of any infringement action that would be in derogation of, in the case of Licensee, the Elected Patents, and in the case of Licensor, Patents covering Licensor’s compounds other than the Licensed Compounds.

Licensed Patents and Joint Patents. (i) Licensor Licensee shall have the first rightright to, but not and shall, in its sole discretion with regard to each Licensed Patent, Joint Patent, or invention disclosure, file, prosecute and maintain such Licensed Patents and Joint Patents in the obligationTerritory, at Licensee’s own cost and expense. For the purpose of this Article 5 (Intellectual Property Rights), “prosecution” shall include any post-grant proceeding including patent interference proceeding, opposition proceeding and reexamination. (ii) Licensee shall consult with Licensor and keep Licensor reasonably informed of the status of the Licensed Patents and Joint Patents in the Territory and shall promptly provide Licensor with all material correspondence received from any Government Authority in connection therewith. In addition, Licensee shall use reasonable endeavors to bring provide Licensor with drafts of all proposed material filings and control correspondence to any action or proceeding Government Authority with respect to infringement the Licensed Patents and Joint Patents in the Territory for Licensor’s review and comment prior to the submission of any Licensed Patent (including any Patents within the New Compound IP) or any Joint Patent at its own expense such proposed filings and by counsel of its own choicecorrespondences. Licensee shall have confer with Licensor and consider in good faith Licensor’s comments prior to submitting such filings and correspondences, but, for the rightavoidance of doubt, shall decide (in its absolute discretion) whether to adopt any of Licensor’s comments. (iii) Licensee shall notify Licensor of any decision to cease prosecution and/or maintenance of, or not to continue to pay the expenses of prosecution and/or maintenance of, any Licensed Patents or Joint Patents in the Territory at least forty-five (45) days prior to any filing or payment due date, or any other due date that requires action, in connection with such Licensed Patent or Joint Patent. If Licensee makes such a decision to cease prosecution and/or maintenance of, or not to continue to pay the expenses of prosecution and/or maintenance of, any Licensed Patents or Joint Patents in the Territory, Licensee shall permit Licensor, at its own discretion and at its sole expense, to be represented in any continue prosecution or maintenance of such action by counsel Licensed Patent or Joint Patent. Licensor’s prosecution or maintenance of its own choice, and Licensor and its counsel will reasonably cooperate with Licensee and its counsel in strategizing, preparing, and litigating any such action or proceeding. If Licensor fails to bring any such action or proceeding with respect to infringement of any Licensed Patent or Joint Patent within 90 days following shall not change the notice of alleged infringement, Licensee shall have the right to bring Parties’ respective rights and control any such action at its own expense and by counsel of its own choice, and Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. The Parties may mutually agree to transfer control of enforcement of any of the Licensed Patents or Joint Patents from Licensor to Licensee. (ii) Notwithstanding Section 8.3(b)(i), if obligations under Section 8.2(a)(ii) Licensee has taken control of the preparation, filing, prosecution and maintenance of the Elected Patents, Licensee shall have the first right, but not the obligation, to bring and control any action or proceeding this Agreement with respect to infringement of any Elected such Licensed Patent (including Licensed Patents or Patents within the New Compound IP or any Joint Patents that are Elected Patents) at its own expense and by counsel of its own choice. Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Licensee and its counsel will reasonably cooperate with Licensor and its counsel in strategizing, preparing, and litigating any such action or proceeding. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. If Licensee fails to bring any such action or proceeding with respect to infringement of any Elected Patent within [***] days following the notice of alleged infringement, Licensor shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Licensee shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. Further, if under Section 8.2(a)(ii) Licensee has taken control of the preparation, filing, prosecution and maintenance of the Elected Patents, each Party shall reasonably cooperate to avoid making statements or taking actions in connection with patent prosecution or litigation of any infringement action that would be in derogation of, in the case of Licensee, the Elected Patents, and in the case of Licensor, Patents covering Licensor’s compounds other than the Licensed Compoundsthose expressly set forth in this Section 5.3(a)(iii).

Licensed Patents and Joint Patents. (i) Licensor Subject to the remainder of this Section 6.3(b), Kxxxxx shall have the first right, but not the obligation, to bring be responsible for and control any action or proceeding with respect to infringement of any Licensed Patent (including any Patents within the New Compound IP) or any Joint Patent at its own expense and by counsel of its own choice. Licensee shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Licensor and its counsel will reasonably cooperate with Licensee and its counsel in strategizing, preparing, and litigating any such action or proceeding. If Licensor fails to bring any such action or proceeding with respect to infringement of any Licensed Patent or Joint Patent within 90 days following the notice of alleged infringement, Licensee shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. The Parties may mutually agree to transfer control of enforcement of any of the Licensed Patents or Joint Patents from Licensor to Licensee. (ii) Notwithstanding Section 8.3(b)(i), if under Section 8.2(a)(ii) Licensee has taken control of the preparation, filing, prosecution and maintenance of (A) from and after the Elected Option Exercise Date, all patents and patent applications within the Licensed Patents and (B) from and after the Effective Date, all patents and patent applications within the Joint Patents, Licensee in each case (A) and (B) at Kxxxxx’s sole cost and expense. (ii) Promptly after the Option Exercise Date, GigaGen shall transfer the existing, complete patent files for all applicable patents and patent applications to Kineta, shall file all documents necessary to transfer correspondence with the U.S. Patent and Trademark Office and other applicable patent authorities to Kineta and shall give Kxxxxx’s patent counsel power of attorney thereto. GigaGen shall cooperate with Kxxxxx in the transfer of all prosecution and maintenance responsibilities relating to the Licensed Patents. (iii) Kineta shall (A) provide all information reasonably requested by GigaGen with respect to the Licensed Patents and Joint Patents, (B) promptly notify GigaGen in writing with respect to all significant developments regarding the Licensed Patents and Joint Patents, (C) promptly provide GigaGen with a copy of each material communication from any patent authority regarding the Licensed Patents and Joint Patents, and (D) provide GigaGen with drafts of each material filing (including draft patent applications and responses to office actions and similar filings) with respect to the Licensed Patents and Joint Patents a reasonable amount of time in advance of the anticipated filing date and shall, prior to filing, consider GigaGen’s reasonable comments in good faith. (iv) In the event that Kineta determines not to file, maintain or continue prosecution of any patent or patent application within the Licensed Patents, which shall be based only on a commercially reasonable business purpose related to such prosecution or lack thereof, Kxxxxx shall provide GigaGen written notice thereof at least thirty (30) days before the applicable deadline. Upon receipt of such notice, GigaGen shall have the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement of any Elected Patent (including Licensed Patents or Patents within the New Compound IP or any Joint Patents that are Elected Patents) at its own expense and by counsel of its own choice. Licensor shall have the right, at its own GigaGen’s expense, to be represented in any such action by counsel of its own choiceassume responsibility for filing, prosecuting, and Licensee maintaining such patents and its counsel will reasonably cooperate with Licensor and its counsel in strategizing, preparing, and litigating any such action or proceeding. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. If Licensee fails to bring any such action or proceeding with respect to infringement of any Elected Patent within [***] days following the notice of alleged infringement, Licensor shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Licensee shall have the right, at its own expensepatent applications, to be represented the extent Kineta determines (in any such action by counsel of its own choice. Furtherreasonable discretion), if under Section 8.2(a)(ii) Licensee has taken control of that the preparation, filing, maintenance or continued prosecution and maintenance of the Elected Patents, each Party shall reasonably cooperate to avoid making statements such patent or taking actions patent application would not adversely impact Kxxxxx’s patent strategy in connection with patent prosecution the Licensed Antibodies or litigation of any infringement action that would be in derogation ofLicensed Products. If GxxxXxx decides to assume such responsibility, in the case of Licenseeits sole discretion, the Elected Patents, and it shall so notify Kxxxxx in the case of Licensor, Patents covering Licensor’s compounds other than the Licensed Compoundswriting.

Licensed Patents and Joint Patents. (i) Licensor Subject to the remainder of this Section 6.3(b), Kxxxxx shall have the first right, but not the obligation, to bring be responsible for and control any action or proceeding with respect to infringement of any Licensed Patent (including any Patents within the New Compound IP) or any Joint Patent at its own expense and by counsel of its own choice. Licensee shall have the right, at its own expense, to be represented in any such action by counsel of its own choice, and Licensor and its counsel will reasonably cooperate with Licensee and its counsel in strategizing, preparing, and litigating any such action or proceeding. If Licensor fails to bring any such action or proceeding with respect to infringement of any Licensed Patent or Joint Patent within 90 days following the notice of alleged infringement, Licensee shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. The Parties may mutually agree to transfer control of enforcement of any of the Licensed Patents or Joint Patents from Licensor to Licensee. (ii) Notwithstanding Section 8.3(b)(i), if under Section 8.2(a)(ii) Licensee has taken control of the preparation, filing, prosecution and maintenance of (A) from and after the Elected Option Exercise Date, all patents and patent applications within the Licensed Patents and (B) from and after the Effective Date, all patents and patent applications within the Joint Patents, Licensee in each case (A) and (B) at Kxxxxx’s sole cost and expense. (ii) Promptly after the Option Exercise Date, GigaGen shall transfer the existing, complete patent files for all applicable patents and patent applications to Kineta, shall file all documents necessary to transfer correspondence with the U.S. Patent and Trademark Office and other applicable patent authorities to Kineta and shall give Kxxxxx’s patent counsel power of attorney thereto. GigaGen shall cooperate with Kxxxxx in the transfer of all prosecution and maintenance responsibilities relating to the Licensed Patents. (iii) Kineta shall (A) provide all information reasonably requested by GigaGen with respect to the Licensed Patents and Joint Patents, (B) promptly notify GigaGen in writing with respect to all significant developments regarding the Licensed Patents and Joint Patents, (C) promptly provide GigaGen with a copy of each material communication from any patent authority regarding the Licensed Patents and Joint Patents, and (D) provide GigaGen with drafts of each material filing (including draft patent applications and responses to office actions and similar filings) with respect to the Licensed Patents and Joint Patents a reasonable amount of time in advance of the anticipated filing date and shall, prior to filing, consider GigaGen’s reasonable comments in good faith. (iv) In the event that Kxxxxx determines not to file, maintain or continue prosecution of any patent or patent application within the Licensed Patents, Kineta shall provide GigaGen written notice thereof at least thirty (30) days before the applicable deadline. Upon receipt of such notice, GigaGen shall have the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement of any Elected Patent (including Licensed Patents or Patents within the New Compound IP or any Joint Patents that are Elected Patents) at its own expense and by counsel of its own choice. Licensor shall have the right, at its own expense, to be represented in any such action by counsel of its own choiceassume responsibility for filing, prosecuting, and Licensee maintaining such patents and its counsel will reasonably cooperate with Licensor and its counsel in strategizing, preparing, and litigating any such action or proceeding. At Licensee’s request, Licensor agrees to join any such action brought by Licensee if necessary. If Licensee fails to bring any such action or proceeding with respect to infringement of any Elected Patent within [***] days following the notice of alleged infringement, Licensor shall have the right to bring and control any such action at its own expense and by counsel of its own choice, and Licensee shall have the right, at its own expensepatent applications, to be represented the extent Kineta determines (in any such action by counsel of its own choice. Furtherreasonable discretion), if under Section 8.2(a)(ii) Licensee has taken control of that the preparation, filing, maintenance or continued prosecution and maintenance of the Elected Patents, each Party shall reasonably cooperate to avoid making statements such patent or taking actions patent application would not adversely impact Kxxxxx’s patent strategy in connection with patent prosecution the Licensed Antibodies or litigation of any infringement action that would be in derogation ofLicensed Products. If GxxxXxx decides to assume such responsibility, in the case of Licenseeits sole discretion, the Elected Patents, and it shall so notify Kxxxxx in the case of Licensor, Patents covering Licensor’s compounds other than the Licensed Compoundswriting.