Common use of Option to Clause in Contracts

Option to. “Step-in” to Prosecute and Maintain Patent Rights. (a) If the Lead Prosecuting Party, at any time, determines that it shall cease Prosecution of any particular Patent Rights as to which it is the Lead Prosecuting Party pursuant to Section 8.3.1 (on a country-by-country basis in the Territory), including as to any particular claims in such Patent Rights, then such Party shall give written notice to the other Party of such determination (such notice to be given at least sixty (60) days prior to any deadline for filing or providing a response which would cause such Patent Rights to lapse or be abandoned), and, in such case, shall permit the other Party, at its sole discretion, to continue Prosecution of such Patent Rights at its sole expense (unless the Lead Prosecuting Party is ceasing such Prosecution in favor of other Patent Rights for strategic reasons that will likely benefit the over all patent protection for a Product). If the other Party so elects to continue Prosecution of the applicable patent, it shall become the “Lead Prosecuting Party” with respect thereto, and the Party that is declining such Prosecution efforts shall execute such documents and perform such acts as reasonably necessary to permit the undertaking Party to continue such Prosecution on the Parties’ behalf, in a timely manner. In addition, either Party may, at any time, give notice to the other Party of its election to cease sharing costs with respect to the Prosecution and maintenance of a Shared Cost Patent and, in such case, the costs incurred with respect to such patent after the date of such disclaimer shall thereafter be borne exclusively by the other Party, without reimbursement or credit. (b) If the Lead Prosecuting Party elects to discontinue Prosecution of Patent Rights or, with respect to the Shared Cost Patents, either Party elects to cease sharing the costs of Prosecution (such Party, the “Disclaiming Party”) then upon the other Party’s request, the Disclaiming Party shall assign all of its rights, title and interest in any such Patent Rights (for clarity, in which the Disclaiming Party has an ownership interest) at no cost to the non-disclaiming Party. If Astellas elects to cease funding a Shared Cost Patent or elects to cease funding the cost of Prosecution of an Ambit Licensed Patent that is not a Shared Cost Patent, then such Patent Rights shall thereafter be excluded from the license grants to Astellas in Section 3.1.1; provided, however, that upon written notice to Ambit at any time during the Term, Astellas may elect to include such disclaimed Shared Cost Patents or disclaimed Ambit Licensed Patent in the license grants hereunder by paying Ambit […***…] of the total cost of Prosecuting and maintaining such Patent Rights that were solely borne by Ambit. (c) Notwithstanding the foregoing clause (b), in the case of a Shared Cost Patent or Ambit Licensed Patent, if the Lead Prosecuting Party elects to cease Prosecution of such patent, but is still willing, in the case of the Shared Cost Patents, to continue to share the cost of Prosecuting and maintaining such Patent Rights, or in the case of the Ambit Licensed Patents that are not Shared Cost Patents, to continue to bear the cost of Prosecuting and maintaining such Patent Rights, then such Party shall permit the other Party, in its sole discretion, to continue Prosecution of such Patent Rights. The Parties shall continue to treat such Patent Rights as Shared Cost Patents or Ambit Licensed Patents, as applicable, under this Agreement and the consequences in Section 8.3.5(b) shall not apply.