Common use of Patent Filing, Maintenance and Prosecution Clause in Contracts

Patent Filing, Maintenance and Prosecution. (a) Subject to Section 9.3, with respect to Patents that are licensed to SGI exclusively under this Agreement and with respect to Improvements relating to or arising from such Patents, SGI shall have the first right, in its sole discretion and at its sole cost and expense, to determine the strategies for prosecuting such Patents and to determine whether to maintain such Patents in each country in the Territory. With respect to Patents that are licensed to SGI partially exclusively or non-exclusively under this Agreement and with respect to Improvements relating to or arising front such Patents, BMS shall have the first right, in its sole discretion and at its sole cost and expense, to determine the strategies for prosecuting such Patents and to determine whether to maintain such Patents in each country in the Territory. (b) In the event that the Party having the first right to prosecute and maintain a Patent under Section 9.1(a) elects to abandon the prosecution or maintenance of any such Patents in any country in the Territory, such Party shall give the other Party notice thereof at least 60 days prior to the date on which such other Party is required by law to make a filing in order to preserve rights to patent protection in such country, and the other Party shall have the right to do so, at its own expense, in the name of the owning or controlling Party. In the event that BMS elects to abandon the prosecution or maintenance in any country in the Territory of any Patent licensed to SGI partially exclusively or non-exclusively under this Agreement and SGI elects to assume such prosecution or maintenance, then SGI shall be entitled to a credit against royalties payable to BMS pursuant to Section 5.2 with respect to Net Sales of any Product covered by such Patent equal to the amount of the actual costs and expenses (including reasonable attorneys' fees) incurred by SGI in connection with such prosecution or maintenance. In the event that SGI elects to abandon the prosecution or maintenance in any country in the Territory of any Patent licensed to SGI exclusively under this Agreement and BMS elects to assume such prosecution or maintenance, then SGI's right and license under this Agreement in such country with respect to the Licensed Technology relating to such Patent shall terminate.

Patent Filing, Maintenance and Prosecution. (a) Subject to Section 9.3, with respect to Patents The Party that are licensed to SGI exclusively under this Agreement and with respect to Improvements relating to solely owns or arising from such Patents, SGI controls a Collaboration Compound or an [**] Invention shall have the first right, in its sole discretion and at its sole cost and expensediscretion, to determine whether to file for patent protection in the United States, to determine the strategies for filing and prosecuting such Patents and to determine whether to maintain such Patents in each country in the TerritoryPatents. With respect to Patents that are licensed to SGI partially exclusively or non-exclusively under this Agreement and with respect to Improvements relating to or arising front such Patents, BMS shall have the first right, in its sole discretion and at its sole cost and expense, to determine the strategies for prosecuting such Patents and to determine whether to maintain such Patents in each country in the Territory. (b) In the event that the sole owning or controlling Party having the first right determines not to prosecute and maintain a Patent under Section 9.1(a) elects to abandon file, or abandons the prosecution or maintenance of of, any such Patents in the United States on any country in the Territorysuch Collaboration Compound or [**] Invention, such Party shall give the other Party notice thereof at least 60 days days’ prior to the date on which such other Party is required by law to make a filing in order to preserve rights to patent protection in the United States, and the other Party shall have the right to do so, [**], in the name of the owning or controlling Party. In the case of [**] Inventions that are Joint Inventions, BMS shall have the first right to file, prosecute and maintain Patents relating thereto, [**], in the joint names of the Parties. In the event that BMS determines not to file, or abandons the prosecution or maintenance of any such Patents on any such Joint Invention, BMS shall give ICAgen at least 30 days’ prior notice thereof (but, in any event, such notice shall be given at least 60 days’ prior to the date on which ICAgen is required by law to make a filing in order to preserve rights to patent protection in the applicable country), and ICAgen shall have the right to do so, [**], in the joint names of the Parties. (b) If BMS holds license rights thereto, the filing, prosecution and maintenance of all Patents outside the United States with respect to Collaboration Compounds and [**] Inventions for which patent protection is being sought or has been obtained in the United States shall be done, at BMS’s expense, through BMS’s patent management and affiliates system. In the event that BMS determines not to file, or abandons the prosecution or maintenance of any such Patents, BMS shall give ICAgen at least 30 days’ prior notice thereof (but, in any event, such notice shall be given at least 60 days’ prior to the date on which ICAgen is required by law to make a filing in order to preserve rights to patent protection in the applicable country), and ICAgen shall have the right, but not the obligation, to assume the filing, prosecution or maintenance of such Patents [**]. (c) Except as provided in Sections 10.4(a) and 10.4(b), the Party that solely owns or controls an Invention shall have the right, in its sole discretion, to determine whether to file for patent protection in the Territory, to determine the strategies for filing and prosecuting such Patents and to determine whether to maintain such Patents. In the event that the sole owning or controlling Party determines not to file, or abandons the prosecution or maintenance of any such Patents in any country in the Territory on any such Invention, such Party shall give the other Party notice thereof at least 60 days’ prior to the date on which such other Party is required by law to make a filing in order to preserve rights to patent protection in the applicable country, and the other Party shall have the right to do so, at its own expense[**], in the name of the owning or controlling Party. Except as provided in Sections 10.4(a) and 10.4(b), in the case of Joint Inventions, BMS shall have the first right to file, prosecute and maintain patent applications relating thereto, [**], in the joint names of the Parties. In the event that BMS elects determines not to abandon file, or abandons the prosecution or maintenance of any such Patents on any such Joint Invention, BMS shall give ICAgen at least 30 days’ prior notice thereof (but, in any country event, such notice shall be given at least 60 days’ prior to the date on which the other Party is required by law to make a filing in order to preserve rights to patent protection in the Territory applicable country), and ICAgen shall have the right to do so, [**], in the joint names of the Parties. (d) With respect to the filing, prosecution and maintenance of any Patent licensed to SGI partially exclusively or non-exclusively under this Agreement and SGI elects to assume such prosecution or maintenance, then SGI shall be entitled to a credit against royalties payable to BMS pursuant to this Section 5.2 with respect to Net Sales 10.4, the filing Party shall keep the other Party informed of any Product covered its decisions and actions in this regard by such Patent equal providing a report thereof to the amount of the actual costs and expenses (including reasonable attorneys' fees) incurred by SGI Steering Committee. Further, in connection with any such filing, prosecution or maintenancemaintenance by either Party, such Party shall consult with the other Party and in good faith consider and give due respect to such other Party’s position with respect thereto. In the event that SGI the sole owning or controlling Party elects not to file for patent protection or prosecute or maintain such Patents and the other Party elects to abandon do so, such owning or controlling Party shall cooperate with the prosecution or maintenance other Party in any country in the Territory of any Patent licensed to SGI exclusively under this Agreement and BMS elects to assume such filing, prosecution or maintenance. (e) Notwithstanding anything to the contrary in this Section 10.4, then SGI's right in the event that any Collaboration Compound is an Excluded area compound which is owned jointly by Lilly and license under this Agreement in such country ICAgen, the rights and obligations of the Parties with respect thereto shall be subject to Lilly’s right to participate in the Licensed Technology relating filing and prosecution of patent applications therefor and maintenance of any resulting patents, including without limitation Lilly’s right to such Patent shall terminateuse in-house counsel, pursuant to Section 4.3 of the Lilly Agreement.

Patent Filing, Maintenance and Prosecution. (a) Subject to Section 9.3The Party that solely owns an ICAgen Compound, with respect to Patents that are licensed to SGI exclusively under this Agreement and with respect to Improvements relating to a YAMANOUCHI Compound or arising from such Patents, SGI an Invention shall have the first right, in its sole discretion and at its sole cost and expensediscretion, to determine whether to file for patent protection in any jurisdiction, to determine the strategies for filing and prosecuting such Patents and to determine whether to maintain such Patents in each country in the TerritoryPatents. With respect to Patents that are licensed to SGI partially exclusively or non-exclusively under this Agreement and with respect to Improvements relating to or arising front such Patents, BMS shall have the first right, in its sole discretion and at its sole cost and expense, to determine the strategies for prosecuting such Patents and to determine whether to maintain such Patents in each country in the Territory. (b) In the event that the such Party having the first right determines not to prosecute and maintain a Patent under Section 9.1(a) elects to abandon file, or abandons the prosecution or maintenance of of, any such Patents in any country in the Territoryjurisdiction, such Party shall shall, if it has the right to allow the other Party to prosecute or maintain such Patent(s), give the other Party notice thereof at least 60 days prior to the date on which such other Party is required by law to make a filing or payment of maintenance fees in order to preserve rights to patent protection in such countryjurisdiction, and the other Party shall have the right to do so, at its own expense, in the name of the owning or controlling Party, provided that at least 90 days prior notice shall be required in the case of a determination not to file an application entering the Patent into the first national stage for purposes of the Patent Cooperation Treaty. (b) In the case of Inventions that are Joint Inventions, YAMANOUCHI shall have the first right to file, prosecute and maintain Patents relating thereto, at its sole expense, in the joint names of the Parties. In the event that BMS elects YAMANOUCHI determines not to abandon file or abandons the prosecution or maintenance in of any country such Patent on a Joint Invention, YAMANOUCHI shall give ICAgen at least sixty (60) days’ prior notice thereof, and ICAgen shall have the right to do so, at its own expense, in the Territory of any Patent licensed to SGI partially exclusively or non-exclusively under this Agreement and SGI elects to assume such prosecution or maintenance, then SGI shall be entitled to a credit against royalties payable to BMS pursuant to Section 5.2 with respect to Net Sales of any Product covered by such Patent equal to the amount joint names of the actual costs and expenses (including reasonable attorneys' fees) incurred by SGI in connection with such prosecution or maintenanceParties. In the event that SGI elects YAMANOUCHI proposes to narrow the claims in an application for any such Patent on a Joint Invention, YAMANOUCHI shall give ICAgen at least sixty (60) days’ prior written notice of its intent to narrow such claims, and ICAgen shall thereafter have the right to file and prosecute a divisional or similar application for a Patent providing the coverage YAMANOUCHI proposes to eliminate, at its own expense, in the joint names of the Parties. In the event that YAMANOUCHI is required pursuant to the preceding two sentences to provide ICAgen with notice of a determination not to file or to abandon the prosecution or maintenance or of a proposal to narrow claims, which relates to any action by a patent office in which it is prosecuting an application for any country in such Patent on a Joint Invention to which YAMANOUCHI has less than sixty (60) days to respond after it receives such action, YAMANOUCHI shall not be required to give sixty (60) days’ notice to ICAgen as required under this subsection but shall provide ICAgen with a notice as soon as it receives such action and to the Territory extent reasonably practicable, try to provide ICAgen with its proposal 30 days prior to the due date for the response to the patent office. (c) With respect to the filing, prosecution and maintenance of any Patent licensed pursuant to SGI exclusively under this Agreement Section 8.4, the filing Party shall keep the other Party informed of its decisions and BMS actions in this regard, including without limitation by providing the other Party with copies of all correspondence and drafts of all proposed filings on a timely basis so as to permit the other Party to provide meaningful comments and other input. Further, in connection with any such filing, prosecution or maintenance by either Party, such filing Party shall consult with the other Party and in good faith consider and give due respect to such other Party’s position with respect thereto. In the event that the sole owning Party elects not to file for patent protection or prosecute or maintain such Patents and the other Party elects to assume do so, such owning Party shall cooperate with the other Party in such filing, prosecution or maintenance, then SGI's right and license under this Agreement in such country with respect to the Licensed Technology relating to such Patent shall terminate.

Patent Filing, Maintenance and Prosecution. (a) Subject to Section 9.3, with respect to Patents that are licensed to SGI exclusively under this Agreement and with respect to Improvements relating to or arising from such Patents, SGI shall have the first right, in its sole discretion and at its sole cost and expense, to determine the strategies for prosecuting such Patents and to determine whether to maintain such Patents in each country in the Territory. With respect to Patents that are licensed to SGI partially exclusively or non-exclusively under this Agreement and with respect to Improvements relating to or arising front such Patents, BMS shall have the first right, in its sole discretion and at its sole cost and expense, to determine the strategies for prosecuting such Patents and to determine whether to maintain such Patents in each country in the Territory. (b) In the event that the Party having the first right to prosecute and maintain a Patent under Section 9.1(a) elects to abandon the prosecution or maintenance of any such Patents in any country in the Territory, such Party shall give the other Party notice thereof at least 60 days prior to the date on which such other Party is required by law to make a filing in order to preserve rights to patent protection in such country, and the other Party shall have the right to do so, at its own expense, in the name of the owning or controlling Party. In the event that BMS elects to abandon the prosecution or maintenance in any country in the Territory of any Patent licensed to SGI partially exclusively or non-exclusively under this Agreement and SGI elects to assume such prosecution or maintenance, then SGI shall be entitled to a credit against royalties payable to BMS pursuant to Section 5.2 with respect to Net Sales of any Product covered by such Patent equal to the amount of the actual costs and expenses (including reasonable attorneys' ’ fees) incurred by SGI in connection with such prosecution or maintenance. In the event that SGI elects to abandon the prosecution or maintenance in any country in the Territory of any Patent licensed to SGI exclusively under this Agreement and BMS elects to assume such prosecution or maintenance, then SGI's ’s right and license under this Agreement in such country with respect to the Licensed Technology relating to such Patent shall terminate.