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

Patent Prosecution and Maintenance of Joint Patents. As between the Parties, Sanofi shall have the first right, but not the obligation, using counsel of its own choice, to prepare, file, prosecute and maintain the Joint Patents worldwide including making decisions regarding any Opt-Out or Opt-In and to be responsible for any related interference, re-issuance, re-examination and, prior to the issuance of such Patent, opposition proceedings. Sanofi shall be responsible for all reasonable out-of-pocket costs and expenses incurred in connection with such prosecution and maintenance of Joint Patents. Sanofi shall periodically inform Lexicon of all material steps with regard to the preparation, filing, prosecution and maintenance of Joint Patents in the Major Markets, including by providing Lexicon with a copy of material communications to and from any patent authority in the Major Markets regarding such Joint Patents and by providing Lexicon drafts of any material filings or responses to be made to such patent authorities in the Major Markets sufficiently in advance of submitting such filings or responses so as to allow for a reasonable opportunity for Lexicon to review and comment thereon. Sanofi shall consider in good faith the requests and suggestions of Lexicon with respect to such drafts and with respect Confidential materials omitted and filed separately with the Securities and Exchange Commission. Asterisks denote omissions. to strategies for filing and prosecuting the Joint Patents in the Major Markets. If, as between the Parties, Sanofi decides not to prepare, file, prosecute or maintain a Joint Patent in a country, Sanofi shall provide reasonable prior written notice to Lexicon of such intention and Lexicon shall thereupon have the option to assume the control and direction of the preparation, filing, prosecution and maintenance of such Joint Patent at its sole cost and expense in such country, unless Sanofi’s decision not to prepare, file, prosecute or maintain was based on a good faith desire to preserve the applicable invention as a trade secret or for good faith patent strategy reasons. The prosecuting Party shall, at its sole discretion, determine the order in which the applicants’ names are listed in filings for Joint Patents.

Patent Prosecution and Maintenance of Joint Patents. As between Subject to the Partiesremainder of this Section 5.2.2, Sanofi shall have the first rightLicensee shall, but not the obligationat its sole cost and expense, using counsel of its own choice, to prepare, file, prosecute prosecute, and maintain all of the Patents within the Joint Patents worldwide including making decisions regarding any Opt-Out or Opt-In and IP (“Joint Patents”) in the Territory. Licensee shall have the right to be responsible for any related interference, re-issuance, re-examination and, prior to the issuance use outside counsel of such Patent, opposition proceedings. Sanofi shall be responsible for all reasonable out-of-pocket costs and expenses incurred its choice in connection with such prosecution and maintenance of Joint Patentsactivities; provided that any such counsel shall be reasonably acceptable to AbbVie. Sanofi Licensee shall periodically inform Lexicon of all material steps keep AbbVie reasonably informed with regard to the preparation, filing, prosecution prosecution, and maintenance of Joint Patents in the Major Markets, including by providing Lexicon with a copy of material communications to and from any patent authority in the Major Markets regarding such all Joint Patents and by providing Lexicon drafts shall provide AbbVie with copies of any material proposed patent filings or responses at least [***] prior to be made to such patent authorities in the Major Markets sufficiently in advance of submitting such filings or responses so as to allow for a reasonable any proposed filing. AbbVie shall have an opportunity for Lexicon to review and comment thereon. Sanofi upon patent prosecution and filing decisions prior to the submission of filing and correspondences to the patent authorities, and Licensee shall consider AbbVie’s comments in good faith the requests and suggestions of Lexicon with respect to such drafts and with respect Confidential materials omitted and filed separately with the Securities and Exchange Commissionfaith. Asterisks denote omissions. to strategies for filing and prosecuting the Joint Patents in the Major Markets. If, as between the Parties, Sanofi If Licensee decides not to prepare, file, prosecute prosecute, or maintain a Joint Patent in a country, Sanofi country or other jurisdiction in the Territory Licensee shall provide reasonable [***] prior written notice to Lexicon AbbVie of such intention intention, and Lexicon AbbVie shall thereupon have the option option, in its sole discretion, to assume the control and direction of continue the preparation, filing, prosecution, and maintenance of such Joint Patent at its expense in such country or other jurisdiction. In such an event, Licensee shall promptly provide AbbVie with the appropriate documents for transfer of responsibility for filing, prosecution and maintenance of such Joint Patent at to AbbVie or its sole cost designee and expense in such country, unless Sanofi’s decision not to prepare, file, prosecute shall reasonably cooperate with AbbVie or maintain was based on a good faith desire to preserve the applicable invention its designee as a trade secret or for good faith patent strategy reasons. The prosecuting Party shall, at its sole discretion, determine the order in which the applicants’ names are listed in filings for Joint Patentsprovided under Section 5.2.4.