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

Patent Filing, Maintenance and Prosecution. (a) GSK shall have the first right, using in-house or outside legal counsel selected at GSK's sole discretion, to prepare, file, prosecute, maintain and extend all GSK Sole Inventions and Joint Inventions in countries of GSK's choice throughout the Territory with appropriate credit to ADVANCIS representatives, including the naming of such Parties as inventors where appropriate and in accordance with the relevant legal requirements, for which GSK shall bear the costs relating to such activities which occur at GSK's request or direction. With respect to any Joint Inventions, GSK shall solicit ADVANCIS' advice and review of the nature and text of any such patent applications and important prosecution matters related thereto in reasonably sufficient time prior to filing thereof, and GSK shall take into account ADVANCIS' reasonable comments related thereto. (b) ADVANCIS shall have the first right, using in-house or outside legal counsel selected at ADVANCIS' sole discretion, to prepare, file, prosecute, maintain and extend patent applications and patents concerning all ADVANCIS Patents and ADVANCIS Sole Inventions in countries of ADVANCIS' choice throughout the Territory, for which ADVANCIS shall bear the costs. ADVANCIS shall solicit GSK's advice and review of the nature and text of such patent applications to the extent such are Licensed Technology and important prosecution matters related thereto in reasonably sufficient time prior to filing thereof, and ADVANCIS shall take into account GSK's reasonable comments related thereto. (c) If GSK, prior or subsequent to filing patent applications on any Joint Invention in the Territory elects not to file, prosecute or maintain such patent applications or ensuing patents or claims encompassed by such patent applications or ensuing patents in any country of the Territory, as the case may be, GSK shall give ADVANCIS notice thereof within a reasonable period prior to allowing such patent applications or patents or such claims encompassed by such patent applications or patents to lapse or become abandoned or unenforceable, and ADVANCIS shall thereafter have the right, at its sole expense, to prepare, file, prosecute and maintain patent applications and patents or divisional applications related to such claims encompassed by such patent applications or patents concerning all such inventions and discoveries in countries of its choice throughout the world. (d) If ADVANCIS, prior or subsequent to filing patent applications on any ADVANCIS Patents or ADVANCIS Sole Invention that is Licensed Technology, ADVANCIS elects not to file, prosecute or maintain such patent applications or ensuing patents or claims encompassed by such patent applications or ensuing patents in any country of the Territory, ADVANCIS shall give GSK notice thereof within a reasonable period prior to allowing such patent applications or patents or such claims encompassed by such patent applications or patents to lapse or become abandoned or unenforceable, and GSK shall thereafter have the right, at its sole expense, to prepare, file, prosecute and maintain patent applications and patents or divisional applications related to such claims encompassed by such patent applications or patents concerning all such inventions and discoveries in countries of its choice throughout the world. (e) The Party filing patent applications for Joint Inventions shall do so in the name of and on behalf of both GSK and ADVANCIS. (f) Each of ADVANCIS and GSK shall hold all information it presently knows or acquires under this Section 7.3 that is related to all such patents and patent applications of the other Party as confidential subject to the provisions of this Agreement. (g) Each Party shall cooperate with the other as reasonably requested to effect the provisions of this Section 7.3.

Patent Filing, Maintenance and Prosecution. (a) GSK Research Patents claiming Derivatives only. CUBIST shall have the first right, using in-house or outside legal counsel selected at GSK's sole discretion, to prepare, file, prosecute, maintain and extend all GSK Sole Inventions and Joint Inventions in countries of GSK's choice throughout the Territory with appropriate credit to ADVANCIS representatives, including the naming of such Parties as inventors where appropriate and in accordance with the relevant legal requirements, for which GSK shall bear the costs relating to such activities which occur at GSK's request or direction. With respect to any Joint Inventions, GSK shall solicit ADVANCIS' advice and review of the nature and text of any such patent applications and important prosecution matters related thereto in reasonably sufficient time prior to filing thereof, and GSK shall take into account ADVANCIS' reasonable comments related thereto. (b) ADVANCIS shall have the first right, using in-house or outside legal counsel selected at ADVANCIS' sole discretion, to prepare, file, prosecute, maintain and extend patent applications and patents concerning all ADVANCIS Patents and ADVANCIS Sole Inventions in countries of ADVANCIS' choice throughout the Territory, for which ADVANCIS shall bear the costs. ADVANCIS shall solicit GSK's advice and review of the nature and text of such patent applications to the extent such are Licensed Technology and important prosecution matters related thereto in reasonably sufficient time prior to filing thereof, and ADVANCIS shall take into account GSK's reasonable comments related thereto. (c) If GSK, prior or subsequent to filing patent applications on any Joint Invention in the Territory elects not to file, prosecute or maintain such patent applications or ensuing patents or claims encompassed by such patent applications or ensuing patents in any country of the Territory, as the case may be, GSK shall give ADVANCIS notice thereof within a reasonable period prior to allowing such patent applications or patents or such claims encompassed by such patent applications or patents to lapse or become abandoned or unenforceable, and ADVANCIS shall thereafter have the right, at its sole expense, to prepare, file, prosecute and maintain Research Patents claiming AMRI Derivatives at CUBIST’s cost and expense through patent applications counsel selected by CUBIST, and patents or divisional applications related CUBIST shall provide AMRI copies of all documentation relating to such claims encompassed by such patent applications or patents concerning all such inventions activities, with sufficient time for AMRI to review and discoveries in countries provide comments thereto. CUBIST shall disclose to AMRI the complete texts of its choice throughout the world. (d) If ADVANCIS, prior or subsequent to filing patent applications on any ADVANCIS Patents or ADVANCIS Sole Invention that is Licensed Technology, ADVANCIS elects not to file, prosecute or maintain such patent applications or ensuing patents or claims encompassed by such patent applications or ensuing patents in any country of the Territory, ADVANCIS shall give GSK notice thereof within a reasonable period prior to allowing such patent applications or patents or such claims encompassed by such patent applications or patents to lapse or become abandoned or unenforceable, and GSK shall thereafter have the right, at its sole expense, to prepare, file, prosecute and maintain patent applications and patents or divisional applications related to such claims encompassed by such patent applications or patents concerning all such inventions and discoveries in countries of its choice throughout the world. (e) The Party filing patent applications for Joint Inventions shall do so in the name of and on behalf of both GSK and ADVANCIS. (f) Each of ADVANCIS and GSK shall hold all information it presently knows or acquires under this Section 7.3 that is related to all such patents and patent applications filed by CUBIST, as well as all information received concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving any Research Patents. AMRI shall have the right to review such pending applications and other Party as confidential subject proceedings and make recommendations to the provisions of this Agreement. (g) Each Party shall CUBIST concerning them and their conduct. AMRI and its employees agree to cooperate with the other CUBIST in taking all steps which CUBIST believes reasonably necessary or desirable to secure its rights on this property at CUBIST’s cost. CUBIST shall give [*] days prior written notice to AMRI of any intent to cease prosecution and/or maintenance of any Research Patents and, in such case, on a county-by-country basis, shall permit AMRI, at its sole discretion, to continue prosecution or maintenance at its own expense. If AMRI elects to continue such prosecution or maintenance, AMRI shall notify CUBIST within such [*] day period, and CUBIST shall execute such documents and perform such acts as may be reasonably requested by AMRI to effect the provisions assign all of this Section 7.3.CUBIST’s right, title and interest in and to such Research Patents to AMRI and CUBIST’s license to such Research Patents shall terminate. * CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED WITH THE COMMISSION

Patent Filing, Maintenance and Prosecution. (a) GSK Representatives of MEDIMMUNE and SB shall have the first rightdiscuss in which countries Patents should be filed, using in-house or outside legal counsel selected at GSK's sole discretion, prosecuted and/or maintained. The Parties acknowledge and agree that they intend to prepare, file, prosecuteprosecute and maintain Patents in all major commercial markets where viable patent protection is available (such countries shall be referred to as "Patent Countries"). If the laws affecting patent protection or maintenance costs change in any Patent Country, the Parties shall reassess the need to continue to file, prosecute and maintain Patents in such country. If the Parties determine to discontinue such filing, prosecution and extend all GSK Sole Inventions and Joint Inventions maintenance in countries of GSK's choice throughout the Territory with appropriate credit to ADVANCIS representatives, including the naming of such Parties as inventors where appropriate and in accordance with the relevant legal requirements, for which GSK shall bear the costs relating to such activities which occur at GSK's request or direction. With respect to any Joint Inventions, GSK shall solicit ADVANCIS' advice and review of the nature and text of any such patent applications and important prosecution matters related thereto in reasonably sufficient time prior to filing thereofcountry, and GSK such country shall take into account ADVANCIS' reasonable comments related theretono longer be deemed a Patent Country. (b) ADVANCIS shall have the first rightMEDIMMUNE or MEDIMMUNE licensors, using in-house or outside legal counsel selected at ADVANCIS' sole discretion, to prepare, file, prosecute, maintain and extend patent applications and patents concerning all ADVANCIS Patents and ADVANCIS Sole Inventions in countries of ADVANCIS' choice throughout the Territory, for which ADVANCIS shall bear the costs. ADVANCIS shall solicit GSK's advice and review of the nature and text of such patent applications to the extent such are Licensed Technology and important prosecution matters related thereto in reasonably sufficient time prior to filing thereof, and ADVANCIS shall take into account GSK's reasonable comments related thereto. (c) If GSK, prior or subsequent to filing patent applications on any Joint Invention in the Territory elects not case of MEDIMMUNE Patents licensed to fileMEDIMMUNE, prosecute or maintain such patent applications or ensuing patents or claims encompassed by such patent applications or ensuing patents in any country of the Territory, as the case may be, GSK shall give ADVANCIS notice thereof within a reasonable period prior to allowing such patent applications or patents or such claims encompassed by such patent applications or patents to lapse or become abandoned or unenforceable, and ADVANCIS shall thereafter have the right, at its sole expense, to prepare, file, prosecute and maintain patent applications and patents or divisional applications related to such claims encompassed by such patent applications or patents concerning all such inventions and discoveries in countries of its choice throughout the world. (d) If ADVANCIS, prior or subsequent to filing patent applications on any ADVANCIS MEDIMMUNE Patents or ADVANCIS Sole Invention that is Licensed Technology, ADVANCIS elects not to file, prosecute or maintain such patent applications or ensuing patents or claims encompassed by such patent applications or ensuing patents in any country of the Territory, ADVANCIS shall give GSK notice thereof within a reasonable period prior to allowing such patent applications or patents or such claims encompassed by such patent applications or patents to lapse or become abandoned or unenforceable, and GSK shall thereafter have the right, at its sole expense, to prepare, file, prosecute and maintain patent applications and patents or divisional applications related to such claims encompassed by such patent applications or patents concerning all such inventions and discoveries in countries of its choice throughout the world. (e) The Party filing patent applications for Joint Inventions shall do so in the name Territory through patent counsel selected by MEDIMMUNE and MEDIMMUNE, shall consult with and keep SB advised with respect thereto. MEDIMMUNE shall disclose to SB the complete texts of and on behalf of both GSK and ADVANCIS. (f) Each of ADVANCIS and GSK shall hold all information it presently knows or acquires under this Section 7.3 that is related to all such patents and patent applications filed by MEDIMMUNE or its licensor, as well as all information received concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving any patent licensed herein anywhere in the Territory. SB shall have the right to review such pending applications and other proceedings and make recommendations to MEDIMMUNE concerning them and their conduct. MEDIMMUNE agrees to keep SB promptly and fully informed of the course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and Third Party as confidential subject observations submitted to or received from patent offices throughout the provisions of Territory. MEDIMMUNE shall provide such patent consultation to SB at no cost to SB. In the event MEDIMMUNE intends to finally abandon any MEDIMMUNE Patents licensed to SB under this Agreement, it shall notify SB and SB shall have the right at its own expense to assume responsibility for any such patent or part of patent. (gc) Each Party shall cooperate with the other as reasonably requested to effect the provisions of Notwithstanding anything in this Section 7.39.1, SB may, at its discretion, elect to discontinue financial support of any MEDIMMUNE Patent in any Patent Country, provided, however, that prior to taking such action, SB will notify MEDIMMUNE of its intention at least 60 days prior to the date on which any payment or action is due. In any Patent Country in which SB has elected to discontinue its support of any MEDIMMUNE Patent, MEDIMMUNE, upon receiving notice, may elect at its own expense to assume all financial responsibility for the prosecution or maintenance of such MEDIMMUNE Patent in such Patent Country. In such event, all SB's rights to the MEDIMMUNE Patent will be deemed to have expired with respect to such Patent Country upon MEDIMMUNE's receiving notice of SB's decision. (d) Absent an election not to support the filing, prosecution and/or maintenance of a Patent in any Patent Country, all costs and expenses incurred under this Section 11.1 with respect to the filing, prosecution and/or maintenance of Patents will be paid by SB. Included in such costs and expenses are all reasonable costs for the prosecution, issuance, and maintenance of such patent applications and patents issuing thereon, and any divisional, continuation-in-part, reissue applications or patents, patents-in-addition, patents-of-revalidation or the registrations of any patent or the like.