Common use of Patent Prosecution Clause in Contracts

Patent Prosecution. Phytera shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Lilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technology. The Parties shall agree upon the countries for which patent coverage as described in this Article 4 should be sought and the responsible Party shall prepare, file, prosecute and maintain patents in accordance with that agreement, subject to the provisions of Section 4.1(e) below; provided, however, that the responsible Party shall at a minimum be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult the other Party with respect to its choice of external patent counsel. Each Party shall also keep the other Party continuously informed of all significant matters relating to the preparation, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the other Party to minimize or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to claim in a patent application or provisional.

Patent Prosecution. Phytera The Parties intend to establish broad patent protection for Collaboration Compounds and other patentable inventions arising from the Research. Miles shall supervise and direct patenting of all patentable inventions conceived in the course of and within the scope of the Research and reduced to practice during the Research Term or within one year thereafter by employees of both Parties (the “Inventions”). Miles shall file and prosecute all patent applications covering Inventions. All internal costs and expenses of prosecuting such patent applications covering Inventions shall be borne by [ * ]. All [ * ], for prosecuting such applications on Inventions shall be paid by [ * ] and be [ * ]. Miles shall give Onyx copies of all such applications and related correspondence, in sufficient time to allow Onyx reasonably to comment thereon. Miles shall maintain all Patents that issue on such applications. The external costs and expenses in relation thereto shall be borne by [ * ] and be [ * ]. [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED. Each Party may make its own decision regarding filing and prosecuting applications for Patents on inventions made solely by such Party, except with respect to inventions owned by the other Party pursuant to Section 20.1(b), for which such other Party shall have the right to file and prosecute patent applications. All such applications shall be [ * ]. Prior to such filing, the Parties will consult with each other to facilitate uniformity and efficiency in the filing and prosecution of applications to obtain Patents. Each Party shall be responsible for preparingall costs of prosecuting and maintaining any applications and patents it files hereunder. If a Party decides not to file or maintain an application or patent in any country on an invention hereunder, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly it shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Lilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technology. The Parties shall agree upon the countries for which patent coverage as described in this Article 4 should be sought and the responsible Party shall prepare, file, prosecute and maintain patents in accordance with that agreement, subject to the provisions of Section 4.1(e) below; provided, however, that the responsible Party shall at a minimum be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult give the other Party with respect notice to its choice of external patent counsel. Each Party shall also keep this effect; after that notice, the other Party continuously informed of all significant matters relating to may, at its expense, file or maintain such application or patent, and the preparation, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each first Party shall provide the assign to such other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor the rights in good faith to coordinate its efforts with those of the other Party to minimize or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to claim in a patent application or provisionalpatent.

Patent Prosecution. Phytera Patent applications and other means of formal protection shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for preparing, filing, prosecuting, maintaining the preparation and taking filing of the patent application or other such application. The Parties shall also jointly determine which other actions as are reasonably necessary or appropriate with respect to countries of jurisdictions any such application shall be filed and which of the Phytera Patents and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly Parties shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions filing. If the Parties cannot agree as are reasonably necessary to whether a particular jointly owned IP Rights should be the subject of patent or appropriate other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with respect to the Lilly Patents and any patentable inventions encompassed Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by Lilly Technology and Lilly Program Technologyall Parties or by one Party, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technology[* * *]. The Parties shall agree upon consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries for of jurisdictions in which patent coverage as described in this Article 4 such protection should be sought and in equalizing the responsible costs involved in such protection in proportion to each Party's benefit. In case a Party is not or no more interested in participating in a patent or patent application, it shall prepare, file, prosecute and maintain patents in accordance with that agreement, subject to the provisions of Section 4.1(e) below; provided, however, that the responsible Party shall at a minimum be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult notify the other Party with respect thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to its choice of external patent counsel. Each Party shall also keep the other Party continuously informed of all significant matters relating its rights to the preparationsuch patent or patent application, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide then the other Party shall have the right, at its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the other Party to minimize or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide assist the other Party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such patent or patent application. For the purpose of this Section 8.4 "joint" ownership with written notice regarding respect to inventions and copyrights shall be defined in accordance with the subject matter within Program Technology that such Party plans to claim in a then-current United States patent application law or provisionalcopyright law, as applicable.

Patent Prosecution. Phytera shall (a) The Parties expect that patent applications will be filed and maintained as required to secure the Collaboration Patent Rights. Celera, with reasonable and timely input from Isis, will be responsible for preparing, filing, prosecutingprosecuting and/or maintaining the Celera Exclusive Collaboration Patents throughout the world. Isis with reasonable and timely input from Celera, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly shall will be responsible for preparing, filing, prosecutingprosecuting and/or maintaining the Collaboration Patents other than Celera Exclusive Collaboration Patents throughout the world. Celera and Isis will share equally the costs of filing, prosecuting and/or maintaining such Patent Rights. Notwithstanding the above, either Party may decline to pay its share of the costs for filing, prosecuting and/or maintaining any Collaboration Patent(s) (a "Declining Party"), in which case such Declining Party will notify the other Party promptly in writing and taking in good time to enable the other Party to meet any applicable deadlines, and the other Party will have the right, but not the obligation, to undertake the responsibility for filing, prosecuting and/or maintaining such Collaboration Patents at its own expense, and the Declining Party will reasonably cooperate with and assist the other Party therein. A Declining Party will maintain its license under such Collaboration Patent pursuant to Article 4, except that any right to grant sublicenses therein (other than the sublicensing rights set forth in Sections 4.3(a) 4.3(b)), and any right to receive Licensing Revenue pursuant to Section 7.2 under such Collaboration Patents, will terminate as of the date a Declining Party provides such written notice. Such terminated sublicense rights shall be granted to the other Party, provided such other actions as are reasonably necessary Party has exercised its right of filing, prosecuting and/or maintaining such Collaboration Patents. (b) The Parties anticipate that there may be Joint Patents that arise out of the Collaboration (that do not constitute Collaboration Patents or appropriate with respect Oligonucleotide Patents). To the extent that such a Joint Patent represents an improvement of one Party's technology and not the other, the Party whose technology is improved will have the sole right and responsibility, at its own expense, to prosecute and maintain such Joint Patent. To the Lilly Patents extent that such a Joint Patent either represents an improvement to both Party's technology or does not improve either Party's technology, the Intellectual Property Committee will determine which of the Parties will be responsible for prosecution, maintenance, enforcement and any patentable inventions encompassed by Lilly Technology defense of such Patent and Lilly Program Technology, which shall includewhat procedures will be put in place for coordination among the Parties including, without limitation, patents which Cover Research Compoundscost-sharing and input. (c) Isis will be solely responsible, Closely Related Derivatives at its own expense, for prosecution, maintenance, defense and Products and jointly invented Program Technology. The Parties shall agree upon the countries for which patent coverage as described in this Article 4 should be sought and the responsible Party shall prepare, file, prosecute and maintain patents in accordance with that agreement, subject to the provisions of Section 4.1(e) below; provided, however, that the responsible Party shall at a minimum be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult the other Party with respect to its choice of external patent counsel. Each Party shall also keep the other Party continuously informed of all significant matters relating to the preparation, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide the other Party with copies enforcement of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the other Party to minimize or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to claim in a patent application or provisionalOligonucleotide Patents.

Patent Prosecution. Phytera Patent applications and other means of formal protection shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection, whether pursued by all Parties or by one Party, shall be jointly owned by all Parties and all Parties shall be responsible for paying one-half (1/2) of the total cost involved in preparing, filing, prosecuting, issuing and maintaining and taking any such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents applications and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly shall be responsible for preparing, filing, prosecuting, maintaining and taking such resulting patents or other actions as are reasonably necessary or appropriate with respect to the Lilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technologyprotection. The Parties shall agree upon consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries for of jurisdictions in which patent coverage as described in this Article 4 such protection should be sought and in equalizing the responsible costs involved in such protection. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or patent application, then the other Party shall preparehave the right, fileat its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title and maintain patents interest in the application), maintaining, defending and renewing such patent or patent application. For the purpose of this Section 5.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with that agreementthe then-current United States patent law or copyright law, subject to the provisions of Section 4.1(e) below; providedas applicable. Derivative IP. All Improvements, however, that the responsible Party shall at a minimum be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent modifications or derivatives created by either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult the other Party with respect to its choice of external patent counsel. Each Party shall also keep own IP Rights or the other Party continuously informed of all significant matters relating to the preparation, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those IP Rights of the other Party to minimize or avoid interference (collectively "Derivative IP") during the course of this Agreement, and in accordance with the prosecution licenses granted in Section 4 ("Licensing of IP Rights") above, shall be owned by the owner of the other Party's patent applications. To the extent practicableoriginal IP Rights, each Party but shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior be licensed to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party in accordance with written notice regarding the subject matter within Program Technology that such Party plans licenses applicable to claim the underlying IP Rights as set forth in a patent application or provisionalSection 4 ("Licensing of IP Rights") above.

Patent Prosecution. Phytera (i) One party or its designee (the "Prosecuting Party") shall have the first right to pursue patent protection for Joint Innovations, and the other party or its designee (the "Non-Prosecuting Party") agrees to take reasonable action to cooperate with the Prosecuting Party in this regard. The Prosecuting Party for each Joint Innovation shall be responsible for preparingmutually determined in accordance with the factors listed below in order of priority: (A) if a Joint Innovation is an improvement to, filingor is based on or derived from, prosecutingpredominantly one party's patent rights and/or other intellectual property, maintaining and taking then such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly party shall be responsible the Prosecuting Party; and (B) except as set forth in (A) above, if one party is prosecuting or has prosecuted a related patent application which provides a basis for preparingpriority for all or part of a Joint Innovation, filingthen such party shall be the Prosecuting Party. If the parties cannot agree on the Prosecuting Party based on the foregoing, prosecuting, maintaining and taking such then each party shall retain its rights under applicable law to pursue patent or other actions as are reasonably necessary or appropriate with respect to intellectual property protection for the Lilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technologysubject Joint Innovation at its sole expense. The Parties shall agree upon the countries for which patent coverage as described in this Article 4 should be sought and the responsible Prosecuting Party shall prepare, have the first right to file, prosecute and maintain patent applications and patents for a Joint Innovation. The Non-Prosecuting Party shall promptly reimburse the Prosecuting Party for one-half (1/2) of the Prosecuting Party's out-of-pocket expenses in connection with such activities as they are incurred, provided that if the Non-Prosecuting Party so notifies the Prosecuting Party in writing that it does not wish to reimburse the Prosecuting Party for such expenses, then the Non-Prosecuting Party shall (A) not be responsible for any further costs under this Section 4.3(a) (Patent Prosecution) related to any patent or patent application, in which case all right, title and interest in and to such patent or application (as the case may be) and any patents issuing thereon shall be solely owned by the Prosecuting Party, and (B) receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. (ii) In the event the Prosecuting Party fails or declines to take such actions to pursue patent protection with respect to any Joint Innovation in accordance with that agreementthis Section 4.3(a) (Patent Prosecution), subject then the Non-Prosecuting Party shall have the right to file, prosecute and maintain such patent applications or patents at its sole expense, in which case all right, title and interest in and to such patent or application (as the case may be) and any patents issuing thereon shall be solely owned by the Non-Prosecuting Party and the Prosecuting Party shall receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. The Prosecuting Party shall notify the Non-Prosecuting Party at least [*] days (or such shorter period as is reasonably practicable for deadlines not extendable beyond [*] days) prior to the provisions of Section 4.1(e) below; provided, however, that date the responsible Party shall at a minimum next action or filing is due to be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult the other Party taken with respect to its choice of external patent counsel. Each Party shall also keep the other Party continuously informed of all significant matters relating to the preparation, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the other Party to minimize a Joint Innovation or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to claim in a patent application ---------- [*] Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. or provisionalpatent for a Joint Innovation, if the Prosecuting Party does not intend to take any of the foregoing actions with respect to such Joint Innovation or such patent application or patent.

Patent Prosecution. Phytera VERTEX shall be responsible for preparingthe preparation, filing, prosecuting, maintaining prosecution and taking such other actions as are reasonably necessary or appropriate with respect to the Phytera maintenance of all patents and patent applications included in VERTEX Patents and any patentable all patents and patent applications included in Patents claiming inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technologyowned with SCHERING. Lilly SCHERING shall be responsible for preparingthe preparation, filing, prosecuting, maintaining prosecution and taking such maintenance of all patents and patent applications included in SCHERING Patents. In each case the responsible party shall consult from time to time with the other actions as are reasonably necessary or appropriate party and the Development Committee with respect thereto. The parties hereby agree that to the Lilly Patents extent legally possible the responsible party shall, at a minimum, prepare file, prosecute and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technology. The Parties shall agree upon the countries for which maintain patent coverage as described in this Article 4 should be sought and section in the responsible Party shall prepare, file, prosecute and maintain patents countries listed in accordance with that agreementSchedule 7.2.2, subject to the provisions next succeeding sentence. The party initially responsible for preparation, filing, prosecution and maintenance of Section 4.1(ea particular Patent (the "Initial Responsible Party") belowshall give thirty (30) days advance notice (the "Discontinuance Election") to the other party of any decision to cease preparation, filing, prosecution and maintenance of that Patent in any jurisdiction (a "Discontinued Patent"). In such case, the other party may elect at its sole discretion to continue preparation, filing and prosecution or maintenance of the Discontinued Patent at its sole expense. The party so continuing shall own any such Patent; provided, however, that and the responsible Initial Responsible Party shall at execute such documents and perform such acts as may be reasonably necessary for the other party to file or to continue prosecution or maintenance, including assigning ownership of such Patent to such electing party. Discontinuance may be on a minimum be required to seek country-by-country basis or for a patent coverage application or patent series in the United States, Japan and the European Economic Communitytotal. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party Each party will consult the other Party party with respect to its choice of external patent counsel. Each Party shall also counsel and will keep the other Party that party continuously informed of all significant matters relating to the preparation, filing, prosecution and maintenance of patents and patent applications Patents covered by this Agreement. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party party shall endeavor in good faith to coordinate its efforts with those of the other Party party to minimize or avoid interference with the prosecution of the other Partyparty's patent applications. To the extent practicable, each Party party shall provide the Research Team Development Committee with a copy of any patent application which first discloses any specific Program Technologytechnology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to claim in a patent application Committee or provisionalits designees.

Patent Prosecution. Phytera (i) One party (the "Prosecuting Party") shall have the first right to pursue patent protection for Joint Innovations, and the other party (the "Non-Prosecuting Party") agrees to take reasonable action to cooperate with the Prosecuting Party in this regard. The Prosecuting Party for each Joint Innovation shall be responsible for preparingmutually determined in accordance with the factors listed below in order of priority: (A) if a Joint Innovation is an improvement to, filingor is based on or derived from, prosecutingpredominantly one party's patent rights and/or other intellectual property, maintaining and taking then such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly party shall be responsible the Prosecuting Party; and (B) except as set forth in (A) above, if one party is prosecuting or has prosecuted a related patent application which provides a basis for preparingpriority for all or part of a Joint Innovation, filingthen such party shall be the Prosecuting Party. If the parties cannot agree on the Prosecuting Party based on the foregoing, prosecuting, maintaining and taking such then each party shall retain its rights under applicable law to pursue patent or other actions as are reasonably necessary or appropriate with respect to intellectual property protection for the Lilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technologysubject Joint Innovation at its sole expense. The Parties shall agree upon the countries for which patent coverage as described in this Article 4 should be sought and the responsible Prosecuting Party shall prepare, have the first right to file, prosecute and maintain patent applications and patents for a Joint Innovation. The Non-Prosecuting Party shall promptly reimburse the Prosecuting Party for one-half (1/2) of the Prosecuting Party's out-of-pocket expenses in connection with such activities as they are incurred, provided that if the Non-Prosecuting Party so notifies the Prosecuting Party in writing that it does not wish to reimburse the Prosecuting Party for such expenses, then the Non-Prosecuting Party shall (A) not be responsible for any further costs under this Section 9.4(a) (Patent Prosecution) related to any patent or patent application, in which case all right, title and interest in and to such patent or application (as the case may be) and any patents issuing thereon shall be solely owned by the Prosecuting Party, and (B) receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. (ii) In the event the Prosecuting Party fails or declines to take such actions to pursue patent protection with respect to any Joint Innovation in accordance with that agreementthis Section 9.4(a) (Patent Prosecution), subject then the Non-Prosecuting Party shall have the right to file, prosecute and maintain such patent applications or patents at its sole expense, in which case all right, title and interest in and to such patent or application (as the case may be) and any patents issuing thereon shall be solely owned by the Non-Prosecuting Party and the Prosecuting Party shall receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. The Prosecuting Party shall notify the Non-Prosecuting Party at least [*] days (or such shorter period as is reasonably practicable for deadlines not extendable beyond [ * ] days) prior to the provisions of Section 4.1(e) below; provided, however, that date the responsible Party shall at a minimum next action or filing is due to be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult the other Party taken with respect to its choice of external patent counsel. Each Party shall also keep the other Party continuously informed of all significant matters relating to the preparation, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the other Party to minimize a Joint Innovation or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to claim in a patent application or provisionalpatent for a Joint Innovation, if the Prosecuting Party does not intend to take any of the foregoing actions with respect to such Joint Innovation or such patent application or patent.

Patent Prosecution. Phytera shall be responsible for preparingEach Party ("the filing Party") may, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Lilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technology. The Parties shall agree upon the countries for which patent coverage as described in this Article 4 should be sought and the responsible Party shall prepareat its sole discretion, file, prosecute prosecute, maintain and maintain patents defend against opposition proceedings the Program Patents it owns in accordance with that agreement, subject to such countries as the provisions of Section 4.1(e) below; provided, however, that the responsible filing Party shall at a minimum be required to seek patent coverage in determine. During the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in term of this Section 4.1(c)Agreement, the engaging filing Party will consult shall, at the reasonable request and expense of the other Party, file for such Program Patents in such countries as the other Party with deems necessary to protect its rights under this Agreement, but the rights under such Program Patents shall continue to be owned by the originally filing Party. With respect to its choice of external patent counseljointly-owned Program Patents or Know-how, the owners shall cooperate to file, prosecute, maintain, abandon (where the Parties agree it would be necessary and appropriate to protect trade secret rights), and defend against opposition proceedings such Program Patents jointly and share or bear the cost thereof as they may agree. Each The filing Party shall also keep the other Party continuously informed apprised of all significant matters relating the status of each Program Patent and shall give reasonable consideration to any suggestions or recommendations of the other Party concerning the preparation, filing, prosecution prosecution, maintenance and maintenance defense thereof. If, during the term of patents and patent applications covered by this Agreement. Each , the filing Party shall provide intends to allow any Program Patent to lapse or become abandoned without having first filed a substitute, the filing Party shall, whenever practicable, notify the other Party with copies of any substantial prosecution papers within thirty such intention at least sixty (3060) days of receipt. Each Party prior to the date upon which such Program Patent shall endeavor in good faith to coordinate its efforts with those of lapse or become abandoned, and the other Party shall thereupon be entitled to minimize or avoid interference with assume responsibility for the prosecution of prosecution, maintenance and defense thereof in a particular jurisdiction (unless the other Party's patent applications. To filing Party reasonably determines to abandon the extent practicableProgram Patent in order to protect its trade secrets), each Party but such actions shall provide the Research Team with a copy of not act to transfer any patent application which first discloses any specific Program Technologyrights beyond those expressly set out herein, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide except that if the other Party with written notice regarding the subject matter within assumes such responsibility it shall be entitled to a non-exclusive, royalty-free license only to such Program Technology that Patent and only in such Party plans to claim in a patent application or provisionaljurisdiction.

Patent Prosecution. Phytera Patent applications and other means of formal protection shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection, whether pursued by all Parties or by one Party, shall be jointly owned by all Parties and all Parties shall be responsible for paying one-half (1/2) of the total cost involved in preparing, filing, prosecuting, issuing and maintaining and taking any such other actions as are reasonably necessary or appropriate with respect to the Phytera Patents applications and any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly shall be responsible for preparing, filing, prosecuting, maintaining and taking such resulting patents or other actions as are reasonably necessary or appropriate with respect to the Lilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technologyprotection. The Parties shall agree upon consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries for of jurisdictions in which patent coverage as described in this Article 4 such protection should be sought and in equalizing the responsible costs involved in such protection. In case a Party is not or no more interested in participating in a patent or patent application, it shall prepare, file, prosecute and maintain patents in accordance with that agreement, subject to the provisions of Section 4.1(e) below; provided, however, that the responsible Party shall at a minimum be required to seek patent coverage in the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c), the engaging Party will consult notify the other Party with respect thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to its choice of external patent counsel. Each Party shall also keep the other Party continuously informed of all significant matters relating its rights to the preparationsuch patent or patent application, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide then the other Party shall have the right, at its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the other Party to minimize or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide assist the other Party in obtaining (by assigning all its rights title and interest in the application), maintaining, defending and renewing such patent or patent application. For the purpose of this Section 5.4 "joint" ownership with written notice regarding respect to inventions and copyrights shall be defined in accordance with the subject matter within Program Technology that such Party plans to claim in a then-current United States patent application law or provisionalcopyright law, as applicable.

Patent Prosecution. Phytera 8.3.1 Each party shall promptly notify the other upon the making, conceiving or reducing to practice of any invention or discovery referred to in Section 8.1. With respect to any such invention, 8.3.1.1 BI shall have the first right, using in-house or its usual outside legal counsel, to prepare, file, prosecute, maintain and extend patent applications and patents concerning all such inventions and discoveries made jointly by BI and VP, in countries of BI's choice throughout the world; provided BI shall use reasonable efforts to obtain patent protection in the United States, under the European Patent Convention and in Japan. VP shall be responsible for preparingdesignated as a joint owner on jointly owned inventions. BI shall bear all costs and expenses with respect to such preparation, filing, prosecutingprosecution, maintaining maintenance and taking extension. BI shall solicit VP's advice and review of the nature and text of any joint patent applications and prosecution matters related thereto in reasonably sufficient time prior to filing thereof, and BI shall take into account VP's comments related thereto. 8.3.1.2 Each of BI and VP shall have the first right, using in-house or outside legal counsel selected at their respective sole discretion, to prepare, file, prosecute, maintain and extend patent applications and patents concerning all such other actions as are reasonably necessary inventions and discoveries owned in whole by such party in countries of such party's choice throughout the world, for which such party shall bear all costs and expenses. 8.3.2 If either party to this Agreement elects not to file, prosecute or appropriate with respect to the Phytera Patents and any patentable inventions maintain such PATENT applications or ensuing PATENTS or claims encompassed by Phytera Technology and Phytera Program Technologysuch PATENT applications or ensuing PATENTS in any country, excluding jointly invented Program Technology. Lilly each party shall be responsible for preparing, filing, prosecuting, maintaining and taking give the other party notice thereof within a reasonable period prior to allowing such other actions as are reasonably necessary PATENT applications or appropriate with respect to the Lilly Patents and any patentable inventions PATENTS or such certain claims encompassed by Lilly Technology and Lilly Program Technologysuch PATENT applications or PATENTS to lapse or become abandoned or unenforceable, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technology. The Parties shall agree upon the countries for which patent coverage as described in this Article 4 should be sought and the responsible Party other party shall thereafter have the right, at its sole expense, to prepare, file, prosecute and maintain patents 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 accordance with that agreementcountries of its choice throughout the world. 8.3.3 In the event of the institution of any suit by a THIRD PARTY against BI, subject VP or a sublicensee for PATENT infringement involving the manufacture, use, sale, distribution or marketing of PRODUCTS, the party sued shall promptly notify the other party in writing. BI and VP shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 8.3.4 If either party declines to continue a PATENT effort and the other party elects to continue a PATENT effort at its cost, the declining party shall grant exclusive rights to the electing party and shall transfer its rights in the Joint PATENT Right in question and associated Joint Technology to the electing party. The cost of any such exclusivity or transfer shall be borne by the electing party. Prior to such transfer a joint owner shall not exercise its joint ownership rights or undivided interest outside the specific licensing provisions as set forth hereinabove. 8.3.5 Notwithstanding the provisions of Section 4.1(e) below; provided8.3.1.1, howevereach party shall, that at its own expense, provide reasonable assistance to the responsible Party other party to facilitate filing of all PATENT applications covering inventions referred to in Section 8.1 and shall at execute all documents deemed necessary or desirable therefor. 8.3.6 In the event of the institution of any suit by a minimum be required to seek patent coverage in THIRD PARTY against BI, VP or their sublicensees for PATENT infringement involving the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in connection with activities described in this Section 4.1(c)DISCOVERY, the engaging Party will consult party sued shall promptly notify the other Party with respect to its choice of external patent counsel. Each Party shall also keep the other Party continuously informed of all significant matters relating to the preparation, filing, prosecution and maintenance of patents and patent applications covered by this Agreement. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall endeavor party in good faith to coordinate its efforts with those of the other Party to minimize or avoid interference with the prosecution of the other Party's patent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to claim in a patent application or provisionalwriting.