Common use of MacroGenics Patents Clause in Contracts

MacroGenics Patents. As between the Parties, MacroGenics shall have the sole right and authority, to prepare, file, prosecute and maintain the MacroGenics Patents on a worldwide basis; provided that Provention shall have the right to direct MacroGenics to prepare, file, prosecute and maintain MacroGenics Patents in specified countries and/or regions at Provention’s expense, MacroGenics shall, during the Agreement Term, (i) keep Provention reasonably informed of the status of the MacroGenics Patents and provide Provention with copies of material communications from any patent authority in the Territory in connection therewith; (ii) provide Provention with drafts of all proposed material filings and correspondences to any patent authorities with respect to the MacroGenics Product Patents having at least one independent Product Claim for Provention’s review and comment prior to the submission of such proposed filings and correspondences. MacroGenics shall reasonably consider in good faith Provention’s comments prior to submitting such filings and correspondences and shall not unreasonably disregard any such comments. If MacroGenics determines in its discretion to abandon or not maintain any MacroGenics Patent(s) which Covers the Compound or Product in any country(ies) of the world, then MacroGenics shall provide Provention with written notice of such determination within such period of time reasonably necessary to allow Provention to request that MacroGenics continue to maintain and/or prosecute of such MacroGenics Patent (which notice from MacroGenics shall be given no later than thirty (30) days prior to any final deadline for any pending action or response that may be due with respect to such MacroGenics Patent(s) with the applicable patent authority). Upon receipt of any such request, MacroGenics shall continue to prosecute and maintain such MacroGenics Patent(s) in such country(ies) at Provention’s expense; provided, however, that MacroGenics shall not be required to continue to prosecute or maintain any such MacroGenics Patent(s) if, instead of prosecuting such patent application, MacroGenics instead files a divisional, continuation or continuation-in-part of such patent application to be prosecuted by MacroGenics, which divisional, continuation or continuation-in-part Covers the same or greater scope for the Compound or relevant Product as the MacroGenics Patent(s) proposed to be abandoned. Notwithstanding anything to the contrary in this Section 7.3(a), unless consented to by Provention in writing (such consent not to be unreasonably withheld, delayed or denied), MacroGenics shall prepare, file, prosecute and maintain the MacroGenics Patents that Cover the Compound or Product in the Major Markets at its sole expense throughout the Term.

MacroGenics Patents. As between the Parties, (a) MacroGenics shall have the sole right and authorityto, to prepareat MacroGenics’ discretion, file, prosecute prosecute, and maintain (including the defense of any interference or opposition proceedings), all MacroGenics Patents. *** MacroGenics shall provide to Servier copies of all prosecution filings related to MacroGenics Patents comprising claims Covering Program DARTs and/or Licensed Products (“MacroGenics Product Patents”) sent to or received from patent offices in the Servier Territory, unless otherwise directed by Servier, and, shall provide Servier with a draft of any filing within thirty (30) days in advance of submission, provide Servier an opportunity to provide comments on a worldwide basis; provided and make request of MacroGenics concerning such filings and shall consider in good faith any comments regarding such draft filings that Provention Servier may timely provide. If Servier no longer desires to retain its license under any MacroGenics Patent in the Servier Territory, and desires to ***, it shall have the right to direct *** upon *** written notice. Following such *** period, the Patent(s) referenced in such notice shall no longer be deemed a MacroGenics Patent(s) and Servier shall have no rights hereunder with respect to prepare, file, prosecute such Patent. (b) Subject to the requirements and maintain MacroGenics Patents in specified countries and/or regions at Provention’s expense, MacroGenics shall, during the Agreement Term, (i) keep Provention reasonably informed of the status limitations of the MacroGenics Patents and provide Provention with copies of material communications from any patent authority in the Territory in connection therewith; (ii) provide Provention with drafts of all proposed material filings and correspondences to any patent authorities Third Party Agreements, with respect to the filing, prosecution and maintenance of the MacroGenics IP, including any rights of, and time-frames for, such Third Party licensors to comment on and review any filings and correspondence related thereto, in the event MacroGenics decides not to file a patent application on MacroGenics Know-How specific to Program DARTs and/or Licensed Product in a country of the Servier Territory, or decides to abandon prosecution of any claim of a MacroGenics Product Patents having at least one independent Patent in a country of the Servier Territory or decides to not otherwise maintain or extend any MacroGenics Product Claim for Provention’s review and comment prior to Patent in a country of the submission of such proposed filings and correspondences. Servier Territory, MacroGenics shall reasonably consider in good faith Provention’s comments prior to submitting such filings and correspondences and shall not unreasonably disregard any such comments. If MacroGenics determines in its discretion to abandon or not maintain any MacroGenics Patent(s) which Covers the Compound or Product in any country(ies) of the world, then MacroGenics shall provide Provention with give Servier written notice sufficiently in advance thereof. Unless MacroGenics’ discontinuation of such determination within such period of time reasonably necessary to allow Provention to request that MacroGenics continue to maintain and/or prosecute filing, prosecution or maintenance of such MacroGenics Product Patent (is in order to effect a settlement or to avoid an interference, opposition or other proceeding in which notice from the validity of such MacroGenics shall be given no later than thirty (30) days prior to any final deadline for any pending action or response that Product Patent may be due with respect determined or because another MacroGenics Product Patent of similar claim scope is being prosecuted or has been issued, Servier shall have the first right to file, prosecute, maintain and extend, as the case may be, such MacroGenics Patent(s) with the applicable patent authority). Upon receipt of any such requestProduct Patent, MacroGenics shall continue to prosecute and maintain such MacroGenics Patent(s) in Servier’s name, in such country(ies) at Provention’s expense; provided, however, that MacroGenics shall not be required to continue to prosecute or maintain any such MacroGenics Patent(s) if, instead of prosecuting such patent application, MacroGenics instead files a divisional, continuation or continuation-in-part of such patent application to be prosecuted by MacroGenics, which divisional, continuation or continuation-in-part Covers the same or greater scope for the Compound or relevant Product as the MacroGenics Patent(s) proposed to be abandoned. Notwithstanding anything to the contrary in this Section 7.3(a), unless consented to by Provention in writing (such consent not to be unreasonably withheld, delayed or denied), MacroGenics shall prepare, file, prosecute and maintain the MacroGenics Patents that Cover the Compound or Product in the Major Markets at its sole expense throughout the Termcountry.

MacroGenics Patents. As between the Parties, (a) MacroGenics shall have the sole right and authorityto, to prepareat MacroGenics’ discretion, file, prosecute prosecute, and maintain (including the defense of any interference or opposition proceedings), all MacroGenics Patents. ***. MacroGenics shall provide to Servier copies of all prosecution filings related to MacroGenics Patents comprising claims Covering Program Antibodies and/or Licensed Products (“MacroGenics Product Patents”) sent to or received from patent offices in the Servier Territory, unless otherwise directed by Servier, and, with respect to patent applications having information not previously filed that is intended to be submitted to patent offices in the Servier Territory, shall provide Servier with a draft of each such filing within *** in advance of submission, provide Servier an opportunity to provide comments on and make request of MacroGenics concerning such filings and shall consider in good faith any comments regarding such draft application that Servier may timely provide. In addition, MacroGenics shall provide to Servier such other information related to prosecution of the MacroGenics Patents on a worldwide basis; provided that Provention in the Servier Territory as Servier may from time to time reasonably request to allow Servier to track prosecution and maintenance of such Patents. If Servier no longer desires to retain its license under any MacroGenics Patent in the Servier Territory, and desires to ***, it shall have the right to direct terminate such license to such Patent, and ***, upon *** written notice. Following such *** period, the Patent(s) referenced in such notice shall no longer be deemed a MacroGenics Patent(s) and Servier shall have no rights hereunder with respect to prepare, file, prosecute such Patent. (b) Subject to the requirements and maintain MacroGenics Patents in specified countries and/or regions at Provention’s expense, MacroGenics shall, during the Agreement Term, (i) keep Provention reasonably informed of the status limitations of the MacroGenics Patents and provide Provention with copies of material communications from any patent authority in the Territory in connection therewith; (ii) provide Provention with drafts of all proposed material filings and correspondences to any patent authorities Third Party Agreements, with respect to the filing, prosecution and maintenance of the MacroGenics IP, including any rights of, and time-frames for, such Third Party licensors to comment on and review any filings and correspondence related thereto, in the event MacroGenics decides not to file a patent application on MacroGenics Know-How specific to Program Antibodies and/or Licensed Product in a country of the Servier Territory, or decides to abandon prosecution of any claim of a MacroGenics Product Patents having at least one independent Patent in a country of the Servier Territory or decides to not otherwise maintain or extend any MacroGenics Product Claim for Provention’s review and comment prior to Patent in a country of the submission of such proposed filings and correspondences. Servier Territory, MacroGenics shall reasonably consider in good faith Provention’s comments prior to submitting such filings and correspondences and shall not unreasonably disregard any such comments. If MacroGenics determines in its discretion to abandon or not maintain any MacroGenics Patent(s) which Covers the Compound or Product in any country(ies) of the world, then MacroGenics shall provide Provention with give Servier written notice sufficiently in advance thereof. Unless MacroGenics’ discontinuation of such determination within such period of time reasonably necessary to allow Provention to request that MacroGenics continue to maintain and/or prosecute filing, prosecution or maintenance of such MacroGenics Product Patent (is in order to effect a settlement or to avoid an interference, opposition or other proceeding in which notice from the validity of such MacroGenics shall be given no later than thirty (30) days prior to any final deadline for any pending action or response that Product Patent may be due with respect determined or because another MacroGenics Product Patent of similar claim scope is being prosecuted or has been issued, Servier shall have the first right to file, prosecute, maintain and extend, as the case may be, such MacroGenics Patent(s) with the applicable patent authority). Upon receipt of any such requestProduct Patent, MacroGenics shall continue to prosecute and maintain such MacroGenics Patent(s) in Servier’s name, in such country(ies) at Provention’s expense; provided, however, that MacroGenics shall not be required to continue to prosecute or maintain any such MacroGenics Patent(s) if, instead of prosecuting such patent application, MacroGenics instead files a divisional, continuation or continuation-in-part of such patent application to be prosecuted by MacroGenics, which divisional, continuation or continuation-in-part Covers the same or greater scope for the Compound or relevant Product as the MacroGenics Patent(s) proposed to be abandoned. Notwithstanding anything to the contrary in this Section 7.3(a), unless consented to by Provention in writing (such consent not to be unreasonably withheld, delayed or denied), MacroGenics shall prepare, file, prosecute and maintain the MacroGenics Patents that Cover the Compound or Product in the Major Markets at its sole expense throughout the Termcountry.