Common use of Other Matters Pertaining to Prosecution and Maintenance of Patents Clause in Contracts

Other Matters Pertaining to Prosecution and Maintenance of Patents. (a) The Parties shall coordinate through the Joint Patent Subcommittee the Prosecution and Maintenance of Collaboration Patents claiming any jointly owned Collaboration Know-How or any Patent claiming solely owned Collaboration Know-How that claims the composition of, or method of making or using, a Collaboration Compound (such solely owned Patents, “Compound Patents”). Each Party shall submit to the other Party copies of all correspondence with patent authorities covering such Collaboration Patents for which such Party has responsibility for Prosecution and Maintenance pursuant to Section 8.2.1, and ChemoCentryx shall submit to GSK the same with respect to such correspondence regarding ChemoCentryx Patents which are Compound Patents. Each Party shall keep the other Party informed as to material developments with respect to the Prosecution and Maintenance of such Collaboration Patents or ChemoCentryx Patents, including without limitation, by providing upon request copies of any office actions or any other substantive documents that such Party receives from any patent office, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing the other Party the timely opportunity to have reasonable input into the strategic aspects of such Prosecution and Maintenance. Without limiting the foregoing, neither Party shall file an application for such a Collaboration Patent unless it has first disclosed the same to the Other Party. ChemoCentryx’s obligations under this Section 8.2.4(a) shall terminate with respect to a given set of claims or Patents to the extent they contain only claims covering Progressed Compounds as to which GSK has elected not to exercise its Product Option.

Other Matters Pertaining to Prosecution and Maintenance of Patents. (a) The Parties shall coordinate Each Party will keep the other Party informed through the Joint Patent Subcommittee JPC as to material developments with respect to the Prosecution and Maintenance of Collaboration the Product-Specific Patents claiming any jointly owned Collaboration Knowor Jointly-How or any Patent claiming solely owned Collaboration Know-How that claims the composition of, or method of making or using, a Collaboration Compound (such solely owned Patents, “Compound Patents”). Each Party shall submit to the other Party copies of all correspondence with patent authorities covering such Owned Collaboration Patents for which such Party has responsibility for Prosecution and Maintenance pursuant to Section 8.2.1, and ChemoCentryx shall submit to GSK the same with respect to such correspondence regarding ChemoCentryx Patents which are Compound Patents. Each Party shall keep the other Party informed as to material developments with respect to the Prosecution and Maintenance of such Collaboration Patents 10.2.2 or ChemoCentryx Patentsthis Section 10.2.4, including without limitation, by providing upon request copies of material data as it arises, any office actions or any office action responses or other substantive documents correspondence that such Party provides to or receives from any patent office, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and all patent-related filings, and by providing the other Party the timely opportunity to have reasonable input into the strategic aspects of such Prosecution and Maintenance. Without limiting (b) If Roche elects (i) not to file and prosecute patent applications for the foregoingJointly-Owned Collaboration Patents or Ionis Product-Specific Patents that have been licensed to Roche under this Agreement for which Roche has responsibility for Prosecution and Maintenance pursuant to Section 10.2.2 or Section 10.2.3 (“Roche-Prosecuted Patents”) in a particular country, neither Party shall (ii) not to continue the prosecution (including any interferences, oppositions, reissue proceedings, re-examinations, and patent term extensions, adjustments, and restorations) or maintenance of any Roche-Prosecuted Patent in a particular country, or (iii) not to file and prosecute patent applications for the Roche-Prosecuted Patent in a particular country following a written request from Ionis to file and prosecute in such country, then Roche will so notify Ionis promptly in writing of its intention in good time to enable Ionis to meet any deadlines by which an application for action must be taken to establish or preserve any such a Collaboration Patent unless it has first disclosed Right in such country; and Ionis will have the same right, but not the obligation, to file, prosecute, maintain, enforce, or otherwise pursue such Roche-Prosecuted Patent in the applicable country at its own expense with counsel of its own choice. In such case, Roche will cooperate with Ionis to file for, or continue to Prosecute and Maintain or enforce, or otherwise pursue such Roche-Prosecuted Patent in such country. Notwithstanding anything to the Other Party. ChemoCentryx’s obligations contrary in this Agreement, if Ionis assumes responsibility for the Prosecution and Maintenance of any such Roche-Prosecuted Patent under this Section 8.2.4(a10.2.4(b), Ionis will have no obligation to notify Roche if Ionis intends to abandon such Roche-Prosecuted Patent. The analogous situation will apply mutatis mutandis with regard to Patent Rights (excluding Ionis Core Technology Patents and Ionis Manufacturing and Analytical Patents) shall terminate with respect for which Ionis has responsibility for Prosecution and Maintenance pursuant to a given set of claims Section 10.2.2 or Patents to the extent they contain only claims covering Progressed Compounds as to which GSK has elected not to exercise its Product OptionSection 10.2.3.

Other Matters Pertaining to Prosecution and Maintenance of Patents. (a) The Parties shall coordinate through the Joint Patent Subcommittee Committee the Prosecution and Maintenance of (i) Joint Collaboration Patents claiming any jointly owned Collaboration Know-How or any Patent (ii) Patents claiming solely owned Collaboration Know-How that claims the directed to composition of, or method of making or using, a Collaboration Progressed Compound that has at least reached the Candidate Selection Stage or, after exercise by GSK of a Program Option, a Product Candidate or Licensed Product (such solely owned Patentsthe Patents in clause (ii), “Compound Patents”). Each Party shall submit to ; provided that, in the other Party copies event of all correspondence with patent authorities covering such any dispute in the Joint Patent Committee regarding the Prosecution and Maintenance of Joint Collaboration Patents for or Compound Patents (other than Compound Patents that are also GSK Patents), Targacept shall have the final say except (A) as to whether generally to Prosecute and Maintain Joint Collaboration Patents or Compound Patents in a particular country in which such Party has responsibility GSK agrees to bear all costs for Prosecution and Maintenance pursuant and (B) that, subject to Section 8.2.18.2.5, and ChemoCentryx GSK shall submit to GSK have the same final say after its exercise of a Program Option with respect to those claims in any such correspondence regarding ChemoCentryx Patents Joint Collaboration Patent or Compound Patent that solely cover the composition of matter of, or method of making or using, a Product Candidate in the Program as to which are Compound PatentsGSK has exercised its Program Option. Each Party shall keep the other Party informed as to material developments with respect to the Prosecution and Maintenance of such Joint Collaboration Patents or ChemoCentryx PatentsCompound Patents for which such Party has responsibility for Prosecution and Maintenance pursuant to Sections 8.2.2, 8.2.3 or 8.2.4(c), including without limitation, by providing upon request copies of any office actions or any office action response or other substantive documents correspondence that such Party provides to or receives from any patent office, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing the other Party the timely opportunity to have reasonable input into the strategic aspects of such Prosecution and Maintenance, subject to Section 8.2.5. Without limiting the foregoing, neither Party shall file an a new application for such a Joint Collaboration Patent unless it has first disclosed the same to the Other Party. ChemoCentryx’s obligations under this Section 8.2.4(a) shall terminate with respect to a given set of claims or Patents to the extent they contain only claims covering Progressed Compounds as to which GSK has elected not to exercise its Product Option.Compound Patent