Common use of Patent Filing Clause in Contracts

Patent Filing. (a) CURAGEN shall have the responsibility to prepare, file, prosecute, obtain and maintain U.S. and foreign patent applications and patents on Inventions at its sole expense. Initial patent filings shall be made in the form of a regular CFR Rule 1.51 U.S. Priority patent application or a provisional application, as determined by the Patent Coordinators. The Patent Coordinators for each Party will be designated by such Party from time to time. Patent applications will be perfected by making, as soon as available, an ATCC deposit of at least such Clone(s) as reasonably agreed by the Patent Coordinators, and by making any subsequent application filings necessary to perfect U.S. or foreign priority patent rights in the countries of Europe that are members of the European Patent Organization, Japan, Canada, Mexico and at least such other countries as mutually agreed by the Parties. GENENTECH agrees to provide reasonable and timely assistance and cooperation to CURAGEN to facilitate such filing, prosecution and maintenance, including without limitation, the execution of appropriate powers of attorney. CURAGEN agrees that any such preparation, filing, prosecution and maintenance shall be conducted diligently and in a timely fashion. GENENTECH shall be kept fully informed by CURAGEN of the progress of all patent filings and prosecution hereunder and shall be provided with copies of all material documents pertaining thereto including, without limitation, information regarding inventorship, sequences and sequence listings, serial numbers, filing dates, foreign filing licenses and copies of patent applications, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an Option, until the end of the Option Period. GENENTECH shall be given the opportunity, whenever practical, to review and comment in advance on any patent filings or other correspondence with the patent office during such periods and CURAGEN shall use reasonable efforts to incorporate any comments provided by GENENTECH. CURAGEN shall pursue its priority to claims on Inventions by filing all necessary interferences and opposition papers, motions and the like. Any proposed interference settlement agreement relating to Inventions subject to potential Option by GENENTECH hereunder will be reviewed by the RC. (b) If CURAGEN is unable to file patent applications as set forth in Section 6.2(a) on a timely basis despite diligent efforts concerning Inventions made regarding Clones where the majority of the sequencing of such Clones has taken place at GENENTECH, GENENTECH shall have the option to prepare, file, prosecute, obtain and maintain patent applications and patents on Inventions in the same manner as described in Section 6.2(a) above at any time for any such Inventions by giving written notice thereof to GENENTECH. Following the receipt of such notice and the election of such option by GENENTECH, GENENTECH shall have the right to prepare, file, prosecute, obtain and maintain the patent application(s) and patent(s) identified in the notice, at its sole expense, on behalf of the owner of the Invention, subject to the rights granted herein, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an Option, until the end of the Option Period. CURAGEN shall be given the opportunity to review and comment in advance on any patent filings or other correspondence with the patent office during such periods and GENENTECH shall use reasonable efforts to incorporate any comments provided by CURAGEN. (c) The Parties shall mutually agree before permitting any patent application or patent within Patent Rights to lapse as well as before authorizing any amendment to any patent application or patent within Patent Rights that would irrevocably limit the lawful scope of the Patent Rights, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an option, until the end of the Option Period. (d) No Party shall have any obligation under this Agreement to pay any fees or costs: (i) for bringing a lawsuit or other action to enforce any of the Patent Rights against an actual or suspected infringement or (ii) for any other Party to obtain for its own benefit independent business or legal advice concerning any of the Patent Rights.

Patent Filing. During the Term of this Agreement, with respect to any ------------- Patent Rights, Extended Patent Rights, Inventions or Extended Research Inventions licensed hereunder: (a) Upon granting an exclusive license to GENENTECH hereunder for a Licensed Clone, Lead(s), Extended Research Invention or Extended License Patent Right, CURAGEN and GENENTECH shall file requests for CFR Rule 1.60 continuation patent applications in order to create patent rights relating solely to Licensed Clones, Leads, Extended Research Inventions and Extended License Patent Rights which are exclusively licensed hereunder and not to other Clones or inventions. CURAGEN shall cause such actions to be taken unless the Parties reasonably agree that such actions are not feasible or desirable. (b) GENENTECH shall have the responsibility right to prepare, file, prosecute, obtain and maintain U.S. and foreign patent applications and patents on Inventions maintain, at its sole expense, all Patent Rights and Extended License Patent Rights relating solely to Licensed Clones or Licensed Products relating to Licensed Clones or Leads which are exclusively licensed hereunder. Initial patent filings shall be made in the form of a regular CFR Rule 1.51 U.S. Priority patent application or a provisional application, as determined by the Patent Coordinators. The Patent Coordinators for each Party will be designated by such Party from time to time. Patent applications will be perfected by making, as soon as available, an ATCC deposit of at least such Licensed Clone(s) as reasonably agreed by the Patent Coordinators, and by making any subsequent application filings necessary to perfect U.S. or foreign priority patent rights in the countries of Europe that are members of the European Patent Organization, Japan, Canada, Mexico and at least such other countries as mutually agreed by the Parties. GENENTECH CURAGEN agrees to provide reasonable and timely assistance and cooperation to CURAGEN GENENTECH to facilitate such filing, prosecution and maintenancemaintenance including, including without limitation, the execution of appropriate powers of attorney. CURAGEN GENENTECH agrees that any such preparation, filing, prosecution and maintenance shall be conducted diligently and in a timely fashion. GENENTECH fashion and that CURAGEN shall be kept fully reasonably informed by CURAGEN of the progress of all patent filings and prosecution hereunder and shall be provided with thereof. Upon request GENENTECH will provide copies of all material the following documents pertaining thereto including, without limitation, to CURAGEN: information regarding inventorship, sequences and sequence listings, serial numbers, filing dates, foreign filing licenses and licenses, copies of patent applications, until applications and official correspondence with the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an Option, until the end of the Option Periodpatent office. GENENTECH shall be given the opportunityCURAGEN shall, whenever practical, to review and comment in advance on any patent filings or other correspondence with the patent office during such periods and CURAGEN shall use reasonable efforts to incorporate any comments provided by GENENTECH. CURAGEN shall pursue its priority to claims on Inventions by filing all necessary interferences and opposition papers, motions and the like. Any proposed interference settlement agreement relating to Inventions subject to potential Option by GENENTECH hereunder will be reviewed by the RC. (b) If CURAGEN is unable to file patent applications as set forth in Section 6.2(a) on a timely basis despite diligent efforts concerning Inventions made regarding Clones where the majority of the sequencing of such Clones has taken place at GENENTECH, GENENTECH shall have the option to prepare, file, prosecute, obtain and maintain patent applications and patents on Inventions in the same manner as described in Section 6.2(a) above at any time for any such Inventions by giving written notice thereof to GENENTECH. Following the receipt of such notice and the election of such option by GENENTECH, GENENTECH shall have the right to prepare, file, prosecute, obtain and maintain the patent application(s) and patent(s) identified in the notice, at its sole expense, on behalf of the owner of the Invention, subject to the rights granted herein, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an Option, until the end of the Option Period. CURAGEN shall be given the opportunity to review and comment in advance on any patent filings or other correspondence with the patent office during such periods and GENENTECH shall use reasonable efforts to incorporate any comments provided by CURAGEN. GENENTECH shall, if warranted in its commercially reasonable judgment, pursue its priority to claims on Inventions by filing all necessary interferences and opposition papers, motions and the like. GENENTECH shall conduct any interference proceeding in good faith, applying its commercially reasonable efforts to prevail therein. CURAGEN shall be given the opportunity to review and comment upon any proposed settlement of an interference relating to Patent Rights or Extended Patent Rights subject to license hereunder. GENENTECH will consider CURAGEN's comments in good faith, but shall have the right to enter into a good faith settlement of the interference. (c) Except as provided in (b) above, CURAGEN shall have the responsibility to prepare, file, prosecute, obtain and maintain patent applications and patents on Inventions and Extended Research Inventions licensed hereunder, relating to the Licensed Clones and Leads which are licensed hereunder at its sole expense. GENENTECH agrees to provide reasonable assistance and cooperation to CURAGEN to facilitate such filing, prosecution and maintenance. CURAGEN agrees that any such preparation, filing, prosecution and maintenance shall be conducted as outlined in subsection (b) above and shall be conducted with reasonable diligence and that GENENTECH shall be kept fully informed of the progress thereof and provided with copies of all material documents pertaining thereto during the term of this Agreement. GENENTECH shall, whenever possible, be given the opportunity to review and comment in advance on any patent filings or other correspondence with the patent office during such periods and CURAGEN shall consider incorporating any comments provided by GENENTECH in good faith. (d) The Parties shall mutually agree before permitting any patent application or patent within Patent Rights or Extended License Patent Rights exclusively licensed hereunder to lapse as well as before authorizing any amendment to any patent application or patent within such Patent Rights or Extended License Patent Rights that would irrevocably limit the lawful scope of the Patent Rights or Extended License Patent Rights, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an option, until the end of the Option Period. (de) Before GENENTECH elects to abandon its right to prepare, file, prosecute, obtain and maintain patent applications and patents as described in Section 5.1(b), it shall give at least thirty (30) days prior written notice thereof to CURAGEN. Such notice shall specifically identify the patent application(s) and/or patent(s) for which GENENTECH wishes to relinquish such right. Following the receipt of such notice, CURAGEN shall have the right to prepare, file, prosecute, obtain and maintain the patent application(s) and patent(s) identified in the notice, at its sole expense, and any such patents and patent applications shall be removed from operation of this Agreement. In addition, GENENTECH shall be deemed without any further action to have granted to CURAGEN an exclusive, worldwide license (including the right to grant sublicenses), under GENENTECH's ownership interest in any such patents and applications to develop, have developed, make, have made, use, have used, offer for sale, sell, have sold, import and have imported any and all products in all fields XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXXXXXX. (f) No Party shall have any obligation under this Agreement to pay any fees or costs: (i) for bringing a lawsuit or other action to enforce any of the Patent Rights or Extended License Patent Rights against an actual or suspected infringement or (ii) Confidential Treatment Requested 30 for any other Party to obtain for its own benefit independent business or legal advice concerning any of the Patent Rights or Extended License Patent Rights.

Patent Filing. (a) CURAGEN shall have the responsibility first right (but not the obligation) to prepare, file, prosecute, obtain and maintain U.S. and foreign patent applications and patents on Inventions Inventions, at its sole expense. Initial patent filings shall be made in the form of a regular CFR Rule 1.51 U.S. Priority patent application or a provisional application, as determined by the Patent Coordinators. The Patent Coordinators for each Party will be designated by such Party from time to time. Patent applications will be perfected by making, as soon as available, an ATCC deposit of at least such Clone(s) as reasonably agreed by the Patent Coordinators, and by making any subsequent application filings necessary to perfect U.S. or foreign priority patent rights in the countries of Europe that are members of the European Patent Organization, Japan, Canada, Mexico and at least such other countries as mutually agreed by the Parties. GENENTECH BIOGEN agrees to provide reasonable and timely assistance and cooperation to CURAGEN to facilitate such filing, prosecution and maintenance, including without limitation, the execution of appropriate powers of attorney. CURAGEN agrees that any such preparation, filing, prosecution and maintenance shall be conducted diligently and in a timely fashion. GENENTECH that BIOGEN shall be kept fully informed by CURAGEN of the progress of all patent filings thereof and prosecution hereunder and shall be provided with copies of all material documents pertaining thereto including, without limitation, information regarding inventorship, sequences and sequence listings, serial numbers, filing dates, foreign filing licenses and copies of patent applications, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an Option, until the end of the Option Period. GENENTECH shall BIOGEN shall, whenever possible, be given the opportunity, whenever practical, opportunity to review and comment in advance on any patent filings or other correspondence with the patent office during such periods and CURAGEN shall use reasonable efforts to incorporate consider incorporating any comments provided by GENENTECH. CURAGEN shall pursue its priority to claims on Inventions by filing all necessary interferences and opposition papers, motions and the like. Any proposed interference settlement agreement relating to Inventions subject to potential Option by GENENTECH hereunder will be reviewed by the RCBIOGEN in good faith. (b) If CURAGEN is unable may elect not to file patent applications as set forth in Section 6.2(a) on a timely basis despite diligent efforts concerning Inventions made regarding Clones where the majority of the sequencing of such Clones has taken place at GENENTECH, GENENTECH shall have the option exercise its first right to prepare, file, prosecute, obtain and maintain patent applications and patents on Inventions in the same manner as described in Section 6.2(a) above at any time for any such Inventions patent applications and patents by giving written notice thereof to GENENTECHBIOGEN. Such notice shall specifically identify the patent application(s) and/or patent(s) for which CURAGEN wishes to relinquish such first right. Following the receipt of such notice and the election of such option by GENENTECHnotice, GENENTECH BIOGEN shall have the right to prepare, file, prosecute, obtain and maintain the patent application(s) and patent(s) identified in the notice, at its sole expense, on behalf of the owner of the Invention, subject to the rights granted herein, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an Option, until the end of the Option Period. CURAGEN shall be given the opportunity to review and comment in advance on any patent filings or other correspondence with the patent office during such periods and GENENTECH shall use reasonable efforts to incorporate any comments provided by CURAGEN. (c) The Parties shall mutually agree before permitting any patent application or patent within Patent Rights to lapse as well as before authorizing any amendment to any patent application or patent within Patent Rights that would irrevocably limit the lawful scope of the Patent Rights, until the end of the Exclusive Evaluation Period, and for any Invention which becomes subject to an option, until the end of the Option Period. (d) No Party shall have any obligation under this Agreement to pay any fees or costs: (i) for bringing a lawsuit or other action to enforce any of the Patent Rights against an actual or suspected infringement or (ii) for any other Party to obtain for its own benefit independent business or legal advice concerning any of the Patent Rights.