Common use of PATENT PROTECTION FOR INVENTIONS Clause in Contracts

PATENT PROTECTION FOR INVENTIONS. Each of NeoGenesis and SPL shall promptly disclose to the other knowledge of any Inventions arising in connection with the Screening Program. Responsibility for the preparation, filing, prosecution and maintenance of any patent applications and patents claiming such Inventions shall be determined based upon ownership of the Inventions and shall be handled in accordance with the provisions of this Section 3.6. Within forty five (45) days following disclosure of any Invention(s), the parties shall classify such Invention as a Schering Invention, a NeoGenesis Invention or a Joint Invention and shall update ATTACHMENT C to add such Invention and reflect such classification. (a) NeoGenesis shall have the right and responsibility to prepare, file, prosecute, and maintain all patent applications and patent within the NeoGenesis Patent Rights throughout the Territory at NeoGenesis sole expense, including, without limitation, those with respect to NeoGenesis Inventions. NeoGenesis shall have sole discretion as to all such activities with regard to the NeoGenesis Patent Rights. NeoGenesis shall keep SPL currently advised as to the status of all patents and patent applications with respect to the NeoGenesis Patent Rights and shall supply SPL promptly with copies of all patents, patent applications, substantive patent office actions, substantive responses received or filed in connection with such applications. SPL may offer comments and suggestions with respect to the matters that are the subject of this Section 3.6(a) and NeoGenesis agrees to consider such comments and suggestions; PROVIDED that nothing herein shall obligate NeoGenesis to adopt or follow such comments or suggestions. In the event that NeoGenesis elects not to file for patent protection for any NeoGenesis Inventions or elects not to continue to prosecute or maintain a patent or patent application under the NeoGenesis Patent Rights it shall notify SPL of such decision at least forty-five (45) days prior to the due date of any action or payment due with respect thereto. SPL shall have the right, but not the obligation to assume the responsibility therefor at its own cost and expense. (b) SPL and NeoGenesis, acting through the Steering Committee, shall select and retain patent counsel mutually acceptable to each of them for the purpose of preparing, prosecuting, issuing and maintaining appropriate patent applications concerning Joint Inventions. NeoGenesis, in consultation with SPL, shall be primarily responsible for the preparation, filing (including foreign filing decisions), prosecution and maintenance of such patent applications and patents relating to Joint Inventions. NeoGenesis shall furnish or have furnished to SPL copies of documents relevant to the same and provide SPL with the opportunity to review and comment on patent decisions made by patent counsel. Any disagreements between NeoGenesis and SPL with respect to preparation, filing, prosecution, issuance and maintenance matters will be discussed and resolved to their mutual satisfaction using the procedures specified in Section 9.1, if necessary; PROVIDED, that to the extent that any disagreement regards only the costs associated with a particular proposed action, NeoGenesis may assume responsibility for such costs and the *= CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. requirement that the parties mutually agree upon resolution of the matter shall not apply. Each party shall be responsible for fifty percent (50%) of all expenses associated with the preparation, filing, prosecution, issuance and maintenance of patents or other intellectual property protection for Joint Inventions. In the event that either party elects not to pursue a particular action with respect to which the parties disagree regarding costs, the other party shall have the right to assume such costs and to have such action taken; PROVIDED FURTHER that the non-paying party's licenses hereunder shall exclude any intellectual property rights that are the subject of such action (e.g., patent coverage in a particular country) unless and until such party reimburses the other party for one-half (50%) of the costs of such action. (d) SPL shall have the sole right, but not the obligation, to file, prosecute, and maintain, at SPL's sole expense, each of the Schering Patent Rights throughout the Territory. Upon request, and at SPL's expense, NeoGenesis will provide SPL with reasonable assistance to prepare, file, prosecute, maintain and defend the Schering Patent Rights, and will take all steps necessary to enable SPL to perfect its rights and title to the Schering Patent Rights with respect to any Schering Inventions. Reasonable assistance shall include, without limitation, providing SPL any data and information relating to such Schering Inventions and access to the NeoGenesis employees who are inventors of such Schering Inventions, as well as causing the execution of any patent assignment or other documents.

PATENT PROTECTION FOR INVENTIONS. Each of NeoGenesis and SPL shall promptly disclose to the other knowledge of any Inventions arising in connection with the Screening Program. Responsibility for the preparation, filing, prosecution and maintenance of any patent applications and patents claiming such Inventions shall be determined based upon ownership of the Inventions and shall be handled in accordance with the provisions of this Section 3.6. Within forty forty-five (45) days following disclosure of any Invention(s), the parties shall classify such Invention as a Schering Invention, a NeoGenesis Invention or a Joint Invention and shall update ATTACHMENT C to add such Invention and reflect such classification. (a) NeoGenesis shall have the right and responsibility to prepare, file, prosecute, and maintain all patent applications and patent within the NeoGenesis Patent Rights throughout the Territory at NeoGenesis sole expense, including, without limitation, those with respect to NeoGenesis Inventions. NeoGenesis shall have sole discretion as to all such activities with regard to the NeoGenesis Patent Rights. NeoGenesis shall keep SPL currently advised as to the status of all patents and patent applications with respect to the NeoGenesis Patent Rights and shall supply SPL promptly with copies of all patents, patent applications, substantive patent office actions, substantive responses received or filed in connection with such applications. SPL may offer comments and suggestions with respect to the matters that are the subject of this Section 3.6(a) and NeoGenesis agrees to consider such comments and suggestions; PROVIDED that nothing herein shall obligate NeoGenesis to adopt or follow such comments or suggestions. In the event that NeoGenesis elects not to file for patent protection for any NeoGenesis Inventions or elects not to continue to prosecute or maintain a patent or patent application under the NeoGenesis Patent Rights it shall notify SPL of such decision at least forty-five (45) days prior to the due date of any action or payment due with respect thereto. SPL shall have the right, but not the obligation to assume the responsibility therefor at its own cost and expense. (b) SPL and NeoGenesis, acting through the Steering Committee, shall select and retain patent counsel mutually acceptable to each of them for the purpose of preparing, prosecuting, issuing and maintaining appropriate patent applications concerning Joint Inventions. NeoGenesis, in consultation with SPL, shall be primarily responsible for the preparation, filing (including foreign filing decisions), prosecution and maintenance of such patent applications and patents relating to Joint Inventions. NeoGenesis shall furnish or have furnished to SPL copies of documents relevant to the same and provide SPL with the opportunity to review and comment on patent decisions made by patent counsel. Any disagreements between NeoGenesis and SPL with respect to preparation, filing, prosecution, issuance and maintenance matters will be discussed and resolved to their mutual satisfaction using the procedures specified in Section 9.1, if necessary; PROVIDED, that to the extent that any disagreement regards only the costs associated with a particular proposed action, NeoGenesis may assume responsibility for such costs and the *= CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. requirement that the parties mutually agree upon resolution of the matter shall not apply. Each party shall be responsible for fifty percent (50%) of all expenses associated with the preparation, filing, prosecution, issuance and maintenance of patents or other intellectual property protection for Joint Inventions. In the event that either party elects not to pursue a particular action with respect to which the parties disagree regarding costs, the other party shall have the right to assume such costs and to have such action taken; PROVIDED FURTHER that the non-paying party's licenses hereunder shall exclude any intellectual property rights that are the subject of such action (e.g., patent coverage in a particular country) unless and until such party reimburses the other party for one-half (50%) of the costs of such action. * = CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. (d) SPL shall have the sole right, but not the obligation, to file, prosecute, and maintain, at SPL's sole expense, each of the Schering Patent Rights throughout the Territory. Upon request, and at SPL's expense, NeoGenesis will provide SPL with reasonable assistance to prepare, file, prosecute, maintain and defend the Schering Patent Rights, and will take all steps necessary to enable SPL to perfect its rights and title to the Schering Patent Rights with respect to any Schering Inventions. Reasonable assistance shall include, without limitation, providing SPL any data and information relating to such Schering Inventions and access to the NeoGenesis employees who are inventors of such Schering Inventions, as well as causing the execution of any patent assignment or other documents.

PATENT PROTECTION FOR INVENTIONS. Each of NeoGenesis and SPL Schering shall promptly disclose to the other knowledge of any Inventions arising in connection with the Screening Program. Responsibility for the preparation, filing, prosecution and maintenance of any patent applications and patents claiming such Inventions shall be determined based upon ownership of the Inventions and shall be handled in accordance with the provisions of this Section 3.6. Within forty forty-five (45) days following disclosure of any Invention(s), the parties shall classify such Invention as a Schering Invention, a NeoGenesis Invention or a Joint Invention and shall update ATTACHMENT C to add such Invention and reflect such classification. (a) NeoGenesis shall have the right and responsibility to prepare, file, prosecute, and maintain all patent applications and patent within the NeoGenesis Patent Rights throughout the Territory at NeoGenesis sole expense, including, without limitation, those with respect to NeoGenesis Inventions. NeoGenesis shall have sole discretion as to all such activities with regard to the NeoGenesis Patent Rights. NeoGenesis shall keep SPL Schering currently advised as to the status of all patents and patent applications with respect to the NeoGenesis Patent Rights and shall supply SPL Schering promptly with copies of all patents, patent applications, substantive patent office actions, substantive responses received or filed in connection with such applications. SPL Schering may offer comments and suggestions with respect to the matters that are the subject of this Section 3.6(a) and NeoGenesis agrees to consider such comments and suggestions; PROVIDED that nothing herein shall obligate NeoGenesis to adopt or follow such comments or suggestions. In the event that NeoGenesis elects not to file for patent protection for any NeoGenesis Inventions or elects not to continue to prosecute or maintain a patent or patent application under the NeoGenesis Patent Rights it shall notify SPL Schering of such decision at least forty-five (45) days prior to the due date of any action or payment due with respect thereto. SPL Schering shall have the right, but not the obligation to assume the responsibility therefor at its own cost and expense. (b) SPL Schering and NeoGenesis, acting through the Steering Committee, shall select and retain patent counsel mutually acceptable to each of them for the purpose of preparing, prosecuting, issuing and maintaining appropriate patent applications concerning Joint Inventions. NeoGenesis, in consultation with SPLSchering, shall be primarily responsible for the preparation, filing (including foreign filing decisions), prosecution and maintenance of such patent applications and patents relating to Joint Inventions. NeoGenesis shall furnish or have furnished * = CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. to SPL Schering copies of documents relevant to the same and provide SPL Schering with the opportunity to review and comment on patent decisions made by patent counsel. Any disagreements between NeoGenesis and SPL Schering with respect to preparation, filing, prosecution, issuance and maintenance matters will be discussed and resolved to their mutual satisfaction using the procedures specified in Section 9.1, if necessary; PROVIDED, that to the extent that any disagreement regards only the costs associated with a particular proposed action, NeoGenesis may assume responsibility for such costs and the *= CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. requirement that the parties mutually agree upon resolution of the matter shall not apply. Each party shall be responsible for fifty percent (50%) of all expenses associated with the preparation, filing, prosecution, issuance and maintenance of patents or other intellectual property protection for Joint Inventions. In the event that either party elects not to pursue a particular action with respect to which the parties disagree regarding costs, the other party shall have the right to assume such costs and to have such action taken; PROVIDED FURTHER that the non-paying party's licenses hereunder shall exclude any intellectual property rights that are the subject of such action (e.g., patent coverage in a particular country) unless and until such party reimburses the other party for one-half (50%) of the costs of such action. (d) SPL Schering shall have the sole right, but not the obligation, to file, prosecute, and maintain, at SPLSchering's sole expense, each of the Schering Patent Rights throughout the Territory. Upon request, and at SPLSchering's expense, NeoGenesis will provide SPL Schering with reasonable assistance to prepare, file, prosecute, maintain and defend the Schering Patent Rights, and will take all steps necessary to enable SPL Schering to perfect its rights and title to the Schering Patent Rights with respect to any Schering Inventions. Reasonable assistance shall include, without limitation, providing SPL Schering any data and information relating to such Schering Inventions and access to the NeoGenesis employees who are inventors of such Schering Inventions, as well as causing the execution of any patent assignment or other documents.

PATENT PROTECTION FOR INVENTIONS. Each of NeoGenesis and SPL Schering shall promptly disclose to the other knowledge of any Inventions arising in connection with the Screening Program. Responsibility for the preparation, filing, prosecution and maintenance of any patent applications and patents claiming such Inventions shall be determined based upon ownership of the Inventions and shall be handled in accordance with the provisions of this Section 3.6. Within forty five (45) days following disclosure of any Invention(s), the parties shall classify such Invention as a Schering Invention, a NeoGenesis Invention or a Joint Invention and shall update ATTACHMENT C to add such Invention and reflect such classification. (a) NeoGenesis shall have the right and responsibility to prepare, file, prosecute, and maintain all patent applications and patent within the NeoGenesis Patent Rights throughout the Territory at NeoGenesis sole expense, including, without limitation, those with respect to NeoGenesis Inventions. NeoGenesis shall have sole discretion as to all such activities with regard to the NeoGenesis Patent Rights. NeoGenesis shall keep SPL Schering currently advised as to the status of all patents and patent applications with respect to the NeoGenesis Patent Rights and shall supply SPL Schering promptly with copies of all patents, patent applications, substantive patent office actions, substantive responses received or filed in connection with such applications. SPL Schering may offer comments and suggestions with respect to the matters that are the subject of this Section 3.6(a) and NeoGenesis agrees to consider such comments and suggestions; PROVIDED that nothing herein shall obligate NeoGenesis to adopt or follow such comments or suggestions. In the event that NeoGenesis elects not to file for patent protection for any NeoGenesis Inventions or elects not to continue to prosecute or maintain a patent or patent application under the NeoGenesis Patent Rights it shall notify SPL Schering of such decision at least forty-five (45) days prior to the due date of any action or payment due with respect thereto. SPL *= CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. Schering shall have the right, but not the obligation to assume the responsibility therefor at its own cost and expense. (b) SPL Schering and NeoGenesis, acting through the Steering Committee, shall select and retain patent counsel mutually acceptable to each of them for the purpose of preparing, prosecuting, issuing and maintaining appropriate patent applications concerning Joint Inventions. NeoGenesis, in consultation with SPLSchering, shall be primarily responsible for the preparation, filing (including foreign filing decisions), prosecution and maintenance of such patent applications and patents relating to Joint Inventions. NeoGenesis shall furnish or have furnished to SPL Schering copies of documents relevant to the same and provide SPL Schering with the opportunity to review and comment on patent decisions made by patent counsel. Any disagreements between NeoGenesis and SPL Schering with respect to preparation, filing, prosecution, issuance and maintenance matters will be discussed and resolved to their mutual satisfaction using the procedures specified in Section 9.1, if necessary; PROVIDED, that to the extent that any disagreement regards only the costs associated with a particular proposed action, NeoGenesis may assume responsibility for such costs and the *= CONFIDENTIAL TREATMENT REQUESTED: MATERIAL HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. requirement that the parties mutually agree upon resolution of the matter shall not apply. Each party shall be responsible for fifty percent (50%) of all expenses associated with the preparation, filing, prosecution, issuance and maintenance of patents or other intellectual property protection for Joint Inventions. In the event that either party elects not to pursue a particular action with respect to which the parties disagree regarding costs, the other party shall have the right to assume such costs and to have such action taken; PROVIDED FURTHER that the non-paying party's licenses hereunder shall exclude any intellectual property rights that are the subject of such action (e.g., patent coverage in a particular country) unless and until such party reimburses the other party for one-half (50%) of the costs of such action. (d) SPL Schering shall have the sole right, but not the obligation, to file, prosecute, and maintain, at SPLSchering's sole expense, each of the Schering Patent Rights throughout the Territory. Upon request, and at SPLSchering's expense, NeoGenesis will provide SPL Schering with reasonable assistance to prepare, file, prosecute, maintain and defend the Schering Patent Rights, and will take all steps necessary to enable SPL Schering to perfect its rights and title to the Schering Patent Rights with respect to any Schering Inventions. Reasonable assistance shall include, without limitation, providing SPL Schering any data and information relating to such Schering Inventions and access to the NeoGenesis employees who are inventors of such Schering Inventions, as well as causing the execution of any patent assignment or other documents.