Common use of Patent Application Clause in Contracts

Patent Application. 13.1. The Collaborator may file any Patent Application with the prior written consent of JTC (such consent not to be unreasonably withheld) on the following terms and conditions: 13.1.1. the Collaborator shall take the lead in the preparation, filing, prosecution and maintenance of the Patent Application in accordance with the terms of this Agreement (the “Lead Party”); and 13.1.2. at the time of granting its consent, JTC shall be entitled to elect whether JTC wishes to be a co-applicant of the Patent Application. For clarity, the Parties agree that JTC is entitled to withhold consent for filing of any Patent Application should JTC determine that: a) the filing of the Patent Application prejudices or is contrary to national interest such as national security; or b) the filing of the Patent Application prejudices or is contrary to public interest, for instance, where the Foreground IP and/or patentable inventions is necessary for carrying out regulatory responsibilities and should not be the monopoly of any one company. 13.2. In the event that JTC elects to be a co-applicant of the Patent Application, the following terms and conditions shall apply: 13.2.1. the Patent Application shall be filed in the joint names of JTC and the Collaborator as joint owners of equal undivided shares thereof; 13.2.2. the Lead Party shall further ensure compliance with all applicable Singapore patent laws and regulations when filing the Patent Application, including obtaining any necessary national security clearances from the Intellectual Property Office of Singapore prior to any foreign filings of the Patent Application. 13.2.3. the Lead Party shall provide JTC with: 13.2.3.1 a copy of any draft of such Patent Application sufficiently prior to filing to permit JTC reasonable opportunity to review and make comments thereon 13.2.3.2 copies of all substantive communications received from patent offices with respect to such filings; and 13.2.3.3 copies of all grants or certificates of registration of any such Patent Application; 13.2.4. the Parties agree to give each other reasonable assistance in the preparation, filing, prosecution and maintenance of any such Patent Application filed and shall cause to be executed all assignments and other instruments and documents as may be necessary or appropriate; 13.2.5. unless otherwise agreed, all IP Expenses shall be shared by the Parties equally; and 13.2.6. the Lead Party shall not abandon the prosecution or maintenance of any such Patent Application without the prior written consent of JTC. JTC reserves the right to carry out a defensive publication of the IP if the Collaborator chooses to abandon the application; and 13.2.7. the provisions of clauses 10.2, 11 and 12 shall apply mutatis mutandis. 13.3. In the event that JTC elects not to be a co-applicant of the Patent Application, the following terms and conditions shall apply: 13.3.1. JTC will assign its share of the Foreground IP to the Collaborator, to the extent it is necessary for inclusion in the Collaborator’s Patent Application for the same, but otherwise all other ownership positions as set out in this Agreement shall remain unchanged. Such assignment shall be without prejudice to the provisions on Confidential Information and JTC Data. For clarity, JTC shall still be a co-owner of all unassigned portions of the Foreground IP; 13.3.2. such assignment shall be subject to and conditional on: (i) the Collaborator granting JTC an irrevocable non-exclusive, fully paid up, royalty-free licence to continue using the assigned IP/patent for fulfilling its statutory functions, powers and duties, and its internal, non-commercial, research and development and educational purposes; (ii) the Collaborator and JTC having agreed upon the Sharing Ratio using the Sharing Ratio form set out in Schedule 3; and (iii) all IP Expenses shall be solely borne by the Collaborator. 13.4. The provisions of this clause 13.4 shall apply whether or not JTC elects to be a co- applicant of the Patent Application (i.e. even if JTC elects not to be a co-applicant). JTC reserves the rights to: 13.4.1. name its employee(s) involved in the Research Project as co-inventors; 13.4.2. review and suggest amendments to the Collaborator’s proposed Patent Application; 13.4.3. veto the Collaborator’s Patent Application if it discloses any of JTC’s Confidential Information. 13.5. The provisions of this clause 13 shall survive termination or expiry of the Agreement.

Patent Application. 13.1. The Collaborator may file any Patent Application with the prior written consent of JTC (such consent not to be unreasonably withheld) on the following terms and conditions: 13.1.1. the Collaborator shall take the lead in the preparation, filing, prosecution and maintenance of the Patent Application in accordance with the terms of this Agreement (the “Lead Party”); and 13.1.2. at the time of granting its consent, JTC shall be entitled to elect whether JTC wishes to be a co-applicant of the Patent Application. For clarity, the Parties agree that JTC is entitled to withhold consent for filing of any Patent Application should JTC determine that: a) the filing of the Patent Application prejudices or is contrary to national interest such as national security; or b) the filing of the Patent Application prejudices or is contrary to public interest, for instance, where the Foreground IP and/or patentable inventions is necessary for carrying out regulatory responsibilities and should not be the monopoly of any one company. 13.2. In the event that JTC elects to be a co-applicant of the Patent Application, the following terms and conditions shall apply: 13.2.1. the Patent Application shall be filed in the joint names of JTC and the Collaborator as joint owners of equal undivided shares thereof; 13.2.2. the Lead Party shall further ensure compliance with all applicable Singapore patent laws and regulations when filing the Patent Application, including obtaining any necessary national security clearances from the Intellectual Property Office of Singapore prior to any foreign filings of the Patent Application. 13.2.3. the Lead Party shall provide JTC with: 13.2.3.1 a copy of any draft of such Patent Application sufficiently prior to filing to permit JTC reasonable opportunity to review and make comments thereon 13.2.3.2 copies of all substantive communications received from patent offices with respect to such filings; and 13.2.3.3 copies of all grants or certificates of registration of any such Patent Application; 13.2.4. the Parties agree to give each other reasonable assistance in the preparation, filing, prosecution and maintenance of any such Patent Application filed and shall cause to be executed all assignments and other instruments and documents as may be necessary or appropriate; 13.2.5. unless otherwise agreed, all IP Expenses shall be shared by the Parties equally; and 13.2.6. the Lead Party shall not abandon the prosecution or maintenance of any such Patent Application without the prior written consent of JTC. JTC reserves the right to carry out a defensive publication of the IP if the Collaborator chooses to abandon the application; and 13.2.7. the provisions of clauses 10.2, 11 and 12 shall apply mutatis mutandis. 13.3. In the event that JTC elects not to be a co-applicant of the Patent Application, the following terms and conditions shall apply: 13.3.1. JTC will assign its share of the Foreground IP to the Collaborator, to the extent it is necessary for inclusion in the Collaborator’s Patent Application for the same, but otherwise all other ownership positions as set out in this Agreement shall remain unchanged. Such assignment shall be without prejudice to the provisions on Confidential Information and JTC Data. For clarity, JTC shall still be a co-owner of all unassigned portions of the Foreground IP; 13.3.2. such assignment shall be subject to and conditional on: (i) 13.3.2.1. the Collaborator granting JTC an irrevocable non-exclusive, fully paid up, royalty-exclusive licence free of licence fee to be able to continue using the assigned IP/patent for fulfilling its own statutory functions, powers functions and duties, and its internal, non-commercial, research and development Research & Development and educational purposes; (ii) 13.3.2.2. the Collaborator and JTC having agreed upon the Sharing Ratio using the Sharing Ratio form set out referred to in Schedule 3clause 11.2.3; and (iii) 13.3.2.3. all IP Expenses shall be solely borne by the Collaborator. 13.4. The provisions of this clause 13.4 shall apply whether or not JTC elects to be a co- co-applicant of the Patent Application (i.e. even if JTC elects not to be a co-applicant). JTC reserves the rights to: 13.4.1. name its employee(s) involved in the Research Project as co-inventors; 13.4.2. review and suggest amendments to the Collaborator’s proposed Patent Application; 13.4.3. veto the Collaborator’s Patent Application if it discloses any of JTC’s Confidential Information. 13.5. The provisions of this clause 13 shall survive termination or expiry of the Agreement.

Patent Application. 13.1. The Collaborator may file any Patent Application with the prior written consent of JTC (such consent not to be unreasonably withheld) on the following terms and conditions: 13.1.1. the Collaborator shall take the lead in the preparation, filing, prosecution and maintenance of the Patent Application in accordance with the terms of this Agreement (the “Lead Party”); and 13.1.2. at the time of granting its consent, JTC shall be entitled to elect whether JTC wishes to be a co-applicant of the Patent Application. For clarity, the Parties agree that JTC is entitled to withhold consent for filing of any Patent Application should JTC determine that: a) the filing of the Patent Application prejudices or is contrary to national interest such as national security; or b) the filing of the Patent Application prejudices or is contrary to public interest, for instance, where the Foreground IP and/or patentable inventions is necessary for carrying out regulatory responsibilities and should not be the monopoly of any one company. 13.2. In the event that JTC elects to be a co-applicant of the Patent Application, the following terms and conditions shall apply: 13.2.1. the Patent Application shall be filed in the joint names of JTC and the Collaborator as joint owners of equal undivided shares thereof; 13.2.2. the Lead Party shall further ensure compliance with all applicable Singapore patent laws and regulations when filing the Patent Application, including obtaining any necessary national security clearances from the Intellectual Property Office of Singapore prior to any foreign filings of the Patent Application. 13.2.3. the Lead Party shall provide JTC with: 13.2.3.1 a copy of any draft of such Patent Application sufficiently prior to filing to permit JTC reasonable opportunity to review and make comments thereon 13.2.3.2 copies of all substantive communications received from patent offices with respect to such filings; and 13.2.3.3 copies of all grants or certificates of registration of any such Patent Application; 13.2.4. the Parties agree to give each other reasonable assistance in the preparation, filing, prosecution and maintenance of any such Patent Application filed and shall cause to be executed all assignments and other instruments and documents as may be necessary or appropriate; 13.2.5. unless otherwise agreed, all IP Expenses shall be shared by the Parties equally; and 13.2.6. the Lead Party shall not abandon the prosecution or maintenance of any such Patent Application without the prior written consent of JTC. JTC reserves the right to carry out a defensive publication of the IP if the Collaborator chooses to abandon the application; and 13.2.7. the provisions of clauses 10.2, 11 and 12 shall apply mutatis mutandis. 13.3. In the event that JTC elects not to be a co-applicant of the Patent Application, the following terms and conditions shall apply: 13.3.1. JTC will assign its share of the Foreground IP to the Collaborator, to the extent it is necessary for inclusion in the Collaborator’s Patent Application for the same, but otherwise all other ownership positions as set out in this Agreement shall remain unchanged. Such assignment shall be without prejudice to the provisions on Confidential Information and JTC Data. For clarity, JTC shall still be a co-owner of all unassigned portions of the Foreground IP; 13.3.2. such assignment shall be subject to and conditional on: (i) 13.3.2.1. the Collaborator granting JTC an irrevocable non-exclusive, fully paid up, royalty-exclusive licence free of licence fee to be able to continue using the assigned IP/patent for fulfilling its non-commercial statutory functions, powers and duties, and its internal, non-commercial, research and development R&D and educational purposes; (ii) 13.3.2.2. the Collaborator and JTC having agreed upon the Sharing Ratio using the Sharing Ratio form set out Xxxxx referred to in Schedule 3clause 11.2.3; and (iii) 13.3.2.3. all IP Expenses shall be solely borne by the Collaborator. 13.4. The provisions of this clause 13.4 shall apply whether or not JTC elects to be a co- co-applicant of the Patent Application (i.e. even if JTC elects not to be a co-applicant). JTC reserves the rights to: 13.4.1. name its employee(s) involved in the Research Project as co-inventors; 13.4.2. review and suggest amendments to the Collaborator’s proposed Patent Application; 13.4.3. veto the Collaborator’s Patent Application if it discloses any of JTC’s Confidential Information. 13.5. The provisions of this clause 13 shall survive termination or expiry of the Agreement.