Common use of Licensor Patents and Joint Patents Clause in Contracts

Licensor Patents and Joint Patents. (i) Starting with the Continuation Date, Company shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) in the Territory, to the extent such Patent Rights solely Cover Collaboration Compounds and Products. In the event that any Licensor Patent or Joint Patent Covers both Collaboration Compounds and Products and compositions that are not Collaboration Compounds and Products, the Parties shall attempt to file divisional or other applications separating the claims covering Collaboration Compounds and Products from claims covering other compositions, and each Party shall bear the costs incurred respectively. If such separation cannot be achieved, then Licensor shall have the right to make decisions, after due consultation with Company as set forth in paragraph (f) below, provided that Licensor shall reimburse Company for any additional costs and expense incurred by Company in following such Licensor decision. Except to the extent set forth otherwise in the preceding two sentences of this Section 7.4(d), Company shall bear all costs and expenses of filing, prosecuting and maintaining such Licensor Patents and Joint Patents in the Territory. Company shall keep Licensor informed of the status of the filing and prosecution of such Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) in the Territory. At Company’s request, Licensor will provide Company with reasonable free-of-charge assistance in prosecuting such Licensor Patents and Joint Patents to the extent possible, including providing such data in Licensor’s Control that is, in Company’s reasonable judgment, needed to support the prosecution of such Licensor Patents and Joint Patents. If Company elects not to file or to continue to prosecute or maintain any of such Licensor Patents or Joint Patents in any country in the Territory, then it shall notify Licensor in writing at least [...***...] before any final deadline applicable to the filing, *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities and Exchange Commission. prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent in such country or possession. In such case, Licensor shall have the right, at its own cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent in the Territory. Licensor Patents and Joint Patents will be filed, prosecuted and maintained in the jurisdictions set forth on Schedule 7.4(d). Jurisdictions may be added or deleted from Schedule 7.4(d) only by written agreement of the Parties executed by their Patent Coordinators. (ii) Licensor shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) outside the Territory. Licensor shall bear all costs and expenses of filing, prosecuting and maintaining Licensor Patents and Joint Patents outside the Territory. Licensor shall keep Company informed of the status of the filing and prosecution of Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) outside the Territory. At Licensor’s request, Company will provide Licensor with reasonable free-of-charge assistance in prosecuting Licensor Patents and Joint Patents to the extent possible, including providing such data in Company’s Control that is, in Licensor’s reasonable judgment, needed to support the prosecution of a Licensor Patent and Joint Patents outside the Territory. If Licensor elects not to file or to continue to prosecute or maintain a Licensor Patent or Joint Patent outside the Territory, then it shall notify Company in writing at least [...***...] before any final deadline applicable to the filing, prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent outside the Territory. In such case, Company shall have the right, at its own cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent outside the Territory.

Licensor Patents and Joint Patents. (i) Starting with the Continuation Date, Company Licensee shall have the first right, and but not the obligation, to file, prosecute Prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) in the Territory, to the extent such Patent Rights solely Cover Collaboration Compounds and Products. In the event that any Licensor Patent or Joint Patent Covers both Collaboration Compounds and Products and compositions that are not Collaboration Compounds and Products, the Parties shall attempt to file divisional or other applications separating the claims covering Collaboration Compounds and Products from claims covering other compositions, and each Party shall bear the costs incurred respectively. If such separation cannot be achieved, then Licensor shall have the right to make decisions, after due consultation with Company as set forth in paragraph (f) below, provided that Licensor shall reimburse Company for any additional costs and expense incurred by Company in following such Licensor decision. Except to the extent set forth otherwise in the preceding two sentences of this Section 7.4(d), Company shall bear Maintain all costs and expenses of filing, prosecuting and maintaining such Licensor Patents and Joint Patents in the TerritoryPatents, at its sole cost and expense and by counsel selected by Licensee. Company Licensee shall reasonably consult with Licensor and keep Licensor reasonably informed of the status of such Patents, and shall provide Licensor with all material correspondence received from any patent authority in connection therewith at Licensor’s reasonable request. In addition, at Licensor’s reasonable request, Licensee shall provide Licensor with drafts of all proposed material filings and correspondence to any patent authority with respect to such Patents for Licensor’s review and comment prior to the filing submission of such proposed filings and correspondence. Licensee shall confer with Licensor and consider in good faith Licensor’s comments prior to submitting such filings and correspondence, provided that Licensor provides such comments within [***] of receiving the draft filings and correspondence from Licensee. To aid Licensee in prosecution of such Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) in the Territory. At Company’s requestPatents, Licensor will provide Company information, execute and deliver documents, and cooperate with reasonable free-of-charge assistance in prosecuting such Licensor Patents Licensee and Joint Patents do other acts as Licensee may reasonably request. (ii) If Licensee desires to the extent possible, including providing such data in Licensor’s Control that is, in Company’s reasonable judgment, needed abandon or cease to support the prosecution of such Licensor Patents Prosecute and Joint Patents. If Company elects not to file or to continue to prosecute or maintain Maintain any of such Licensor Patents or Joint Patents in any country in the Territory, then it shall notify Licensor in writing at least [...***...] before any final deadline applicable to the filing, *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities and Exchange Commission. prosecution or maintenance of such Licensor Patent or Joint Patent, as Licensee shall provide reasonable prior written notice to Licensor of such intention (which notice shall, to the case may beextent possible, or be given no later than [***] prior to the last deadline for any other date by which an action that must be taken with respect to establish or preserve any such Licensor Patent or Joint Patent in such country or possessionthe relevant patent office). In such case, upon Licensor’s written election provided no later than [***] after such notice from Licensee, Licensor shall have the right, may Prosecute and Maintain such Patent at its own Licensor’s sole cost and expense. If Licensor does not provide such election within [***] after such notice from Licensee, to pursue the filing or support the continued prosecution or maintenance of Licensee may, in its sole discretion, continue Prosecute and Maintain such Licensor Patent or Joint discontinue to Prosecute and Maintain such Patent. Any Patent that is abandoned under this Section 8.2(b)(ii) will no longer be subject to the license granted in Section 2.1. (iii) Within [***] after the Effective Date, Licensor shall deliver to Licensee copies of all patent prosecution files relating to Licensor Patents in the Territory. Licensor Patents and Joint Patents will be filed, prosecuted and maintained in the jurisdictions set forth on Schedule 7.4(d). Jurisdictions may be added or deleted from Schedule 7.4(d) only by written agreement of the Parties executed by their Patent Coordinators. (ii) Licensor shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) outside the Territory. Licensor shall bear all costs and expenses of filing, prosecuting and maintaining Licensor Patents and Joint Patents outside the Territory. Licensor shall keep Company informed of the status of the filing and prosecution of Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) outside the Territory. At Licensor’s request, Company will provide Licensor with reasonable free-of-charge assistance in prosecuting Licensor Patents and Joint Patents to the extent possible, including providing such data in Company’s Control that is, in Licensor’s reasonable judgment, needed to support the prosecution of a Licensor Patent and Joint Patents outside the Territory. If Licensor elects not to file or to continue to prosecute or maintain a Licensor Patent or Joint Patent outside the Territory, then it shall notify Company in writing at least [...***...] before any final deadline applicable to the filing, prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent outside the Territory. In such case, Company shall have the right, at its own cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent outside the Territory.

Licensor Patents and Joint Patents. (i) Starting with the Continuation Date, Company shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) in the Territory, to the extent such Patent Rights solely Cover Collaboration Compounds and Products. In the event that any Licensor Patent or Joint Patent Covers both Collaboration Compounds and Products and compositions that are not Collaboration Compounds and Products, the Parties shall attempt to file divisional or other applications separating the claims covering Collaboration Compounds and Products from claims covering other compositions, and each Party shall bear the costs incurred respectively. If such separation cannot be achieved, then Licensor shall have the right to make decisions, after due consultation with Company as set forth in paragraph (f) below, provided that Licensor shall reimburse Company for any additional costs and expense incurred by Company in following such Licensor decision. Except to the extent set forth otherwise in the preceding two sentences of this Section 7.4(d), Company shall bear all costs and expenses of filing, prosecuting and maintaining such Licensor Patents and Joint Patents in the Territory. Company shall keep Licensor informed of the status of the filing and prosecution of such Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) in the Territory. At Company’s request, Licensor will provide Company with reasonable free-of-charge assistance in prosecuting such Licensor Patents and Joint Patents to the extent possible, including providing such data in Licensor’s Control that is, in Company’s reasonable judgment, needed to support the prosecution of such Licensor Patents and Joint Patents. If Company elects not to file or to continue to prosecute or maintain any of such Licensor Patents or Joint Patents in any country in the Territory, then it shall notify Licensor in writing at least [...***...] before any final deadline applicable to the filing, *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities and Exchange Commission. prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent in such country or possession. In such case, Licensor shall have the right, at its own cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent in the Territory. Licensor Patents and Joint Patents will be filed, prosecuted and maintained in the jurisdictions set forth on Schedule 7.4(d). Jurisdictions may be added or deleted from Schedule 7.4(d) only by written agreement of the Parties executed by their Patent Coordinators. (ii) Licensor shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) outside the Territory. Licensor shall bear all costs and expenses of filing, prosecuting and maintaining Licensor Patents and Joint Patents outside the Territory. Licensor shall keep Company informed of the status of the filing and prosecution of Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) outside the Territory. At Licensor’s request, Company will provide Licensor with reasonable free-of-charge assistance in prosecuting Licensor Patents and Joint Patents to the extent possible, including providing such data in Company’s Control that is, in Licensor’s reasonable judgment, needed to support the prosecution of a Licensor Patent and Joint Patents outside the Territory. If Licensor elects not to file or to continue to prosecute or maintain a Licensor Patent or Joint Patent outside the Territory, then it shall notify Company in writing at least [...***...] before any final deadline applicable to the filing, prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent outside the Territory. In such case, Company shall have the right, at its own cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent outside the Territory.

Licensor Patents and Joint Patents. (i) Starting with the Continuation Date, Company shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) in the Company Territory, to the extent such Patent Rights solely Cover Collaboration Compounds and Products. In the event that any Licensor Patent or Joint Patent Covers both Collaboration Compounds and Products and compositions that are not Collaboration Compounds and Products, the Parties shall attempt to file divisional or other applications separating the claims covering Collaboration Compounds and Products from claims covering other compositions, and each Party shall bear the costs incurred respectively. If such separation cannot be achieved, then Licensor shall have the right to make decisions, after due consultation with Company as set forth in paragraph (f) below, provided that Licensor shall reimburse Company for any additional costs and expense incurred by Company in following such Licensor decision. Except to the extent set forth otherwise in the preceding two sentences of this Section 7.4(d7.4(d)(i), Company shall bear all costs and expenses of filing, prosecuting and maintaining such Licensor Patents and Joint Patents in the Company Territory. Company shall keep Licensor informed of the status of the filing and prosecution of such Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) in the Company Territory. At Company’s request, Licensor will provide Company with reasonable free-of-charge assistance in prosecuting such Licensor Patents and Joint Patents to the extent possible, including providing such data in Licensor’s Control that is, in Company’s *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities and Exchange Commission. reasonable judgment, needed to support the prosecution of such Licensor Patents and Joint Patents. If Company elects not to file or to continue to prosecute or maintain any of such Licensor Patents or Joint Patents in any country in the Company Territory, then it shall notify Licensor in writing at least [...***...] before any final deadline applicable to the filing, *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities and Exchange Commission. prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent in such country or possession. In such case, Licensor shall have the right, at its own cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent in the Company Territory. Licensor Patents and Joint Patents will be filed, prosecuted and maintained in the jurisdictions set forth on Schedule 7.4(d). Jurisdictions may be added or deleted from Schedule 7.4(d) only by written agreement of the Parties executed by their Patent Coordinators. (ii) Licensor shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) outside in the Reserved Territory. Licensor shall bear all costs and expenses of filing, prosecuting and maintaining Licensor Patents and Joint Patents outside in the Reserved Territory. Licensor shall keep Company informed of the status of the filing and prosecution of Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) outside in the Reserved Territory. At Licensor’s request, Company will provide Licensor with reasonable free-of-charge assistance in prosecuting Licensor Patents and Joint Patents to the extent possible, including providing such data in Company’s Control that is, in Licensor’s reasonable judgment, needed to support the prosecution of a Licensor Patent and Joint Patents outside in the Reserved Territory. If Licensor elects not to file or to continue to prosecute or maintain a Licensor Patent or Joint Patent outside in the Reserved Territory, then it shall notify Company in writing at least [...***...] before any final deadline applicable to the filing, prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent outside in the Reserved Territory. In such case, Company shall have the right, at its own cost *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities and Exchange Commission. and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent outside in the Reserved Territory.

Licensor Patents and Joint Patents. (i) Starting with the Continuation Date, Company shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) in the Company Territory, to the extent such Patent Rights solely Cover Collaboration Compounds and Products. In the event that any Licensor Patent or Joint Patent Covers both Collaboration Compounds and Products and compositions that are not Collaboration Compounds and Products, the Parties shall attempt to file divisional or other applications separating the claims covering Collaboration Compounds and Products from claims covering other compositions, and each Party shall bear the costs incurred respectively. If such separation cannot be achieved, then Licensor shall have the right to make decisions, after due consultation with Company as set forth in paragraph (f) below, provided that Licensor shall reimburse Company for any additional costs and expense incurred by Company in following such Licensor decision. Except to the extent set forth otherwise in the preceding two sentences of this Section 7.4(d7.4(d)(i), Company shall bear all costs and expenses of filing, prosecuting and maintaining such Licensor Patents and Joint Patents in the Company Territory. Company shall keep Licensor informed of the status of the filing and prosecution of such Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) in the Company Territory. At Company’s request, Licensor will provide Company with reasonable free-of-charge assistance in prosecuting such Licensor Patents and Joint Patents to the extent possible, including providing such data in Licensor’s Control that is, in Company’s *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities Exchange Commission. reasonable judgment, needed to support the prosecution of such Licensor Patents and Joint Patents. If Company elects not to file or to continue to prosecute or maintain any of such Licensor Patents or Joint Patents in any country in the Company Territory, then it shall notify Licensor in writing at least [...***...] before any final deadline applicable to the filing, *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities and Exchange Commission. prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent in such country or possession. In such case, Licensor shall have the right, at its own cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent in the Company Territory. Licensor Patents and Joint Patents will be filed, prosecuted and maintained in the jurisdictions set forth on Schedule 7.4(d). Jurisdictions may be added or deleted from Schedule 7.4(d) only by written agreement of the Parties executed by their Patent Coordinators. (ii) Licensor shall have the first right, and the obligation, to file, prosecute and maintain Licensor Patents (in Licensor’s name) and Joint Patents (in both Parties’ names) outside in the Reserved Territory. Licensor shall bear all costs and expenses of filing, prosecuting and maintaining Licensor Patents and Joint Patents outside in the Reserved Territory. Licensor shall keep Company informed of the status of the filing and prosecution of Licensor Patents and Joint Patents or related proceedings (e.g. interferences, oppositions, reexaminations, reissues, revocations or nullifications) outside in the Reserved Territory. At Licensor’s request, Company will provide Licensor with reasonable free-of-charge assistance in prosecuting Licensor Patents and Joint Patents to the extent possible, including providing such data in Company’s Control that is, in Licensor’s reasonable judgment, needed to support the prosecution of a Licensor Patent and Joint Patents outside in the Reserved Territory. If Licensor elects not to file or to continue to prosecute or maintain a Licensor Patent or Joint Patent outside in the Reserved Territory, then it shall notify Company in writing at least [...***...] before any final deadline applicable to the filing, prosecution or maintenance of such Licensor Patent or Joint Patent, as the case may be, or any other date by which an action must be taken to establish or preserve such Licensor Patent or Joint Patent outside in the Reserved Territory. In such case, Company shall have the right, at its own cost *Confidential Information, indicated by [...***...], has been omitted from this filing and filed separately with the Securities Exchange Commission. and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensor Patent or Joint Patent outside in the Reserved Territory.