Common use of Patent Prosecution and Maintenance of AbbVie Patents Clause in Contracts

Patent Prosecution and Maintenance of AbbVie Patents. (i) AbbVie shall have the right, but not the obligation, to prepare, file, prosecute, and maintain the AbbVie Patents (including Development License Patents) worldwide, which activities shall be at AbbVie’s sole expense. If AbbVie exercises such right, AbbVie shall (a) exercise Commercially Reasonable Efforts with respect to such preparation, filing, prosecution and maintenance activities; (b) provide Receptos with a copy of each AbbVie Patent as filed, together with its filing date and serial number; (c) promptly inform Receptos of any substantive action or proposed action with respect to claims of any AbbVie Patent having claims directed to Licensed Compound or Licensed Product within a reasonable time prior to taking such action so as to allow Receptos to provide comments thereto; (d) provide Receptos with advance copies of all proposed responses with respect to AbbVie Patents in (c); (e) consider in good faith all comments of Receptos regarding AbbVie Patents; and (f) periodically, but no less than annually, inform Receptos of the allowance and issuance of each AbbVie Patent, together with the date and patent number thereof. (ii) In the event that AbbVie decides not to prepare, file, prosecute, or maintain an AbbVie Patent in a country or other jurisdiction in the Territory, AbbVie shall provide reasonable prior written notice to Receptos of such intention, and, subject to any rights of any Third Parties under any Existing In-License Agreement, Receptos shall thereupon have the option, in its sole discretion, to assume, during the Term, the control and direction of the preparation, filing, prosecution, and maintenance of such AbbVie Patent at its expense in such country or other jurisdiction.

Patent Prosecution and Maintenance of AbbVie Patents. (i) AbbVie shall have the right, but not the obligation, to prepare, file, prosecute, and maintain the AbbVie Patents (including Development License Collaboration Patents) worldwide, which activities shall be at AbbVie’s sole expenseexpense (except to the extent any such expense constitutes an Allowable Expense). If AbbVie exercises such right, AbbVie shall (a) exercise Commercially Reasonable Efforts with respect to such preparation, filing, prosecution and maintenance activities; (b) provide Receptos with a copy of each AbbVie Patent as filed, together with its filing date and serial number; (c) promptly inform Receptos of any substantive action or proposed action with respect to claims of any AbbVie Patent having claims directed to Licensed Compound or Licensed Product within a reasonable time prior to taking such action so as to allow Receptos to provide comments thereto; (d) provide Receptos with advance copies of all proposed responses with respect to AbbVie Patents in (c); (e) consider in good faith all comments of Receptos regarding AbbVie Patents; and (f) periodically, but no less than annually***, inform Receptos of the allowance and issuance of each AbbVie Patent, together with the date and patent number thereof. (ii) In the event that AbbVie decides not to prepare, file, prosecute, or maintain an AbbVie Patent in a country or other jurisdiction in the Territory, AbbVie shall provide reasonable prior written notice to Receptos of such intention, and, subject to any rights of any Third Parties under any Existing In-License Agreement, Receptos shall thereupon have the option, in its sole discretion, to assume, during the Termterm of the Collaboration Agreement, the control and direction of the preparation, filing, prosecution, and maintenance of such AbbVie Patent at its expense (except to the extent any such expense constitutes an Allowable Expense) in such country or other jurisdiction.

Patent Prosecution and Maintenance of AbbVie Patents. (i) AbbVie shall have Subject to the rightremainder of this Section 5.2.1, but not the obligationLicensee shall, to at its sole cost and expense, prepare, file, prosecute, and maintain all of the AbbVie Patents (including Development License Patents) worldwide, which activities in the Territory. Licensee shall have the right to use outside counsel of its choice in connection with such activities; provided that any such counsel shall be at reasonably acceptable to AbbVie’s sole expense. If Licensee shall keep AbbVie exercises such right, AbbVie shall (a) exercise Commercially Reasonable Efforts reasonably informed with respect regard to such the preparation, filing, prosecution, and maintenance of all AbbVie Patents and shall provide AbbVie with copies of any proposed patent filings at least [***] prior to any proposed filing. AbbVie shall have an opportunity to review and comment upon patent prosecution and maintenance activities; (b) provide Receptos with a copy of each AbbVie Patent as filed, together with its filing date and serial number; (c) promptly inform Receptos of any substantive action or proposed action with respect to claims of any AbbVie Patent having claims directed to Licensed Compound or Licensed Product within a reasonable time decisions prior to taking such action so as the submission of filing and correspondences to allow Receptos to provide the patent authorities, and Licensee shall consider AbbVie’s comments thereto; (d) provide Receptos with advance copies of all proposed responses with respect to AbbVie Patents in (c); (e) consider in good faith all comments of Receptos regarding AbbVie Patents; and (f) periodically, but no less than annually, inform Receptos of the allowance and issuance of each AbbVie Patent, together with the date and patent number thereof. (ii) In the event that AbbVie faith. If Licensee decides not to prepare, file, prosecute, or maintain an AbbVie Patent in a country or other jurisdiction in the Territory, AbbVie Licensee shall provide reasonable [***] prior written notice to Receptos AbbVie of such intention, and, subject to any rights of any Third Parties under any Existing In-License Agreement, Receptos and AbbVie shall thereupon have the option, in its sole discretion, to assume, during the Term, assume the control and direction of the preparation, filing, prosecution, and maintenance of such AbbVie Patent at its expense in such country or other jurisdiction. In such event, Licensee shall promptly provide AbbVie with the appropriate documents for transfer of responsibility for filing, prosecution and maintenance of such AbbVie Patent to AbbVie or its designee and shall reasonably cooperate with AbbVie or its designee as provided under Section 5.2.4.