Common use of Patent Provisions Clause in Contracts

Patent Provisions. 7.1 FILING, PROSECUTION AND MAINTENANCE OF PATENTS. Except as otherwise provided in Schedule 2.14.3.3, the Parties agree that: (a) ALNYLAM or RIBOPHARMA has the sole responsibility, to, at ALNYLAM's or RIBOPHARMA's discretion, file, conduct ex parte and inter partes prosecution and maintain in the Territory, the ALNYLAM RNAi Patent Rights owned by ALNYLAM or licensed by RIBOPHARMA to ALNYLAM and licensed to MERCK under this Agreement; and (b) MERCK has the sole responsibility, to, at its discretion, file, conduct ex parte and inter partes prosecution and maintain in the Territory the MERCK RNAi Patent Rights and the patent rights contained in the MERCK RNAi Novel Target IP licensed to ALNYLAM under this Agreement. provided, however, that, with respect to Joint Collaboration Inventions, ALNYLAM shall have the first right to file, conduct ex parte and inter partes prosecution and maintain patent applications and patents for such Joint Collaboration Inventions. With respect to Joint Collaboration Inventions, ALNYLAM may elect not to file, conduct ex parte and inter partes prosecution and/or maintain patent applications and patents and, if so, MERCK, and/or a law firm acting on its behalf, shall have the right to file, conduct ex parte and inter partes prosecution and maintain/or patent applications and patents, as applicable. In each case above, with respect to Joint Collaboration Inventions, (a) the filing Party shall: (i) give the non-filing Party an opportunity to review the text of the applications, (ii) consult with the non-filing Party with respect thereto and give good faith consideration to the requests and suggestions of the non-filing Party with respect to the filing thereof, (iii) supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number, and (iv) shall keep the other Party advised on at least a quarterly basis of the status of the actual and prospective patent filings; and (b) the prosecuting Party shall give the non-prosecuting Party copies of all correspondence from and to the U.S. and all other patent offices related to the prosecution of patents or patent applications covering such Joint Collaboration Inventions and give good faith consideration to the requests and suggestions of the non-prosecuting Party with respect to the prosecution thereof. ALNYLAM shall promptly give notice to MERCK of the grant, lapse, revocation, surrender, invalidation or abandonment of any ALNYLAM RNAi Patent Rights licensed to MERCK. MERCK shall promptly give notice to ALNYLAM of the grant, lapse, revocation, surrender, invalidation or abandonment of any MERCK RNAi Patent Rights and patent rights contained in MERCK RNAi Novel Target IP licensed to ALNYLAM. With respect to all filings, ex parte and inter partes prosecution and maintenance hereunder (including, without limitation, any interference, opposition, reexamination or reissue proceeding), the filing, prosecuting or maintaining Party shall be responsible for payment of all costs and expenses related to such filings, prosecution or maintenance; provided, however, that, with respect to Joint Technology Collaboration Inventions, the Parties shall equally share all costs and expenses related to such filings, prosecution or

Patent Provisions. 7.1 FILING10.1 Ownership of IP, PROSECUTION AND MAINTENANCE OF PATENTSand Filing, Prosecution and Maintenance of Patents 10.1.1 Newly developed Patent Rights, know-how, information, results, or other intellectual property relating to Compounds or Products created during the term of this Agreement or in performance of the Study (“New IP”) shall, whether or not patentable, be owned according to inventorship as determined under United States patent laws. Except as otherwise provided in Schedule 2.14.3.3For the sake of clarity, New IP created solely by Provention and its Affiliates and their respective employees (“Provention New IP”) shall be owned by Provention; New IP created solely by Jxxxxxx and its Affiliates and their respective employees (“Jxxxxxx New IP”) shall be owned by Jxxxxxx; and New IP created by both Provention and Jxxxxxx (or their respective Affiliates, and their employees) shall be jointly owned by Provention and Jxxxxxx (“Joint IP”). 10.1.2 For all Provention New IP that relates to Compounds or Products, including to the Parties agree that: (a) ALNYLAM use or RIBOPHARMA has the sole responsibilityformulation of Compounds or Products, toProvention agrees to grant and hereby grants to Jxxxxxx a non-exclusive, at ALNYLAM's or RIBOPHARMA's discretionsublicensable, fileirrevocable, conduct ex parte and inter partes prosecution and maintain in the Territoryroyalty-free license under such Provention New IP, the ALNYLAM RNAi including any Patent Rights owned by ALNYLAM or licensed by RIBOPHARMA thereon, to ALNYLAM Develop and licensed to MERCK under this Agreement; andCommercialize Compounds and Products outside of the Field. 10.1.3 Each Party shall solely control and be responsible for (b) MERCK has the sole responsibility, to, at its discretionown expense) the filing, fileprosecution, conduct ex parte maintenance, defense, and inter partes prosecution and maintain in the Territory the MERCK RNAi enforcement of Patent Rights and on New IP that it solely owns. However, each Party will consult with the patent rights contained in other on all such matters, including by providing the MERCK RNAi Novel Target IP licensed to ALNYLAM under this Agreement. provided, however, that, with respect to Joint Collaboration Inventions, ALNYLAM shall have the first right to file, conduct ex parte and inter partes prosecution and maintain patent applications and patents for such Joint Collaboration Inventions. With respect to Joint Collaboration Inventions, ALNYLAM may elect not to file, conduct ex parte and inter partes prosecution and/or maintain patent applications and patents and, if so, MERCK, and/or a law firm acting on its behalf, shall have the right to file, conduct ex parte and inter partes prosecution and maintain/or patent applications and patents, as applicable. In each case above, with respect to Joint Collaboration Inventions, (a) the filing Party shall: (i) give the non-filing other Party an opportunity to review the text drafts of new patent applications and responses prior to filing, and shall not unreasonably reject input and comments of the applicationsother Party. Unless otherwise agreed by both Jxxxxxx and Provention, (ii) consult with even in the nonevent the Buy-filing Party with respect thereto Back Option of section 4.1 is not exercised, Jxxxxxx will continue to control and give good faith consideration to the requests and suggestions of the non-filing Party with respect to the filing thereof, (iii) supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number, and (iv) shall keep the other Party advised on at least a quarterly basis of the status of the actual and prospective patent filings; and (b) the prosecuting Party shall give the non-prosecuting Party copies of all correspondence from and to the U.S. and all other patent offices related to the prosecution of patents or patent applications covering such Joint Collaboration Inventions and give good faith consideration to the requests and suggestions of the non-prosecuting Party with respect to the prosecution thereof. ALNYLAM shall promptly give notice to MERCK of the grant, lapse, revocation, surrender, invalidation or abandonment of any ALNYLAM RNAi Patent Rights licensed to MERCK. MERCK shall promptly give notice to ALNYLAM of the grant, lapse, revocation, surrender, invalidation or abandonment of any MERCK RNAi Patent Rights and patent rights contained in MERCK RNAi Novel Target IP licensed to ALNYLAM. With respect to all filings, ex parte and inter partes prosecution and maintenance hereunder (including, without limitation, any interference, opposition, reexamination or reissue proceeding), the filing, prosecuting or maintaining Party shall be responsible for payment (at its own expense) the prosecution, maintenance, defense and enforcement of all costs and expenses related to such filings, prosecution or maintenanceJxxxxxx Patent Rights; provided, however, thatthat Jxxxxxx shall consult with Provention with respect to the prosecution, maintenance defense and enforcement of Jxxxxxx Patent Rights, and Jxxxxxx shall consider Provention’s input in good faith and shall not unreasonably reject input of Provention. 10.1.4 The Parties will agree on who shall file, prosecute, and maintain any Patent Rights on Joint IP, and will share equally in all costs associated therewith. A Party planning on filing any priority-establishing or original (in each case, with respect to any claims or new matter described in the patent specification) patent application, or any substantive response during prosecution of any application or patent within the Patent Rights on Joint Technology Collaboration InventionsIP shall use reasonable efforts to provide to the other Party, with reasonable advance time such as at least thirty (30) days prior to proposed filing in a Patent Office (such as a draft application or response to an official action), and provide the other Party an opportunity to comment thereon through its respective patent counsel. Each Party shall provide to the other, promptly after filing, a copy of each priority-establishing or original (whether provisional or nonprovisional) patent application within the Patent Rights on Joint IP as filed in the Patent Office and each other substantive prosecution filing (including any other patent application filed within the Patent Rights on Joint IP). 10.1.5 Any Jxxxxxx New IP and Jxxxxxx’x interest in Joint IP that contains a Valid Claim will be included in, and considered a part of, the Parties shall equally share all costs and expenses related to such filings, prosecution orJxxxxxx Patent Rights.

Patent Provisions. 7.1 FILING, PROSECUTION AND MAINTENANCE OF PATENTS. Except as otherwise provided in Schedule 2.14.3.3, the Parties agree that: (a) ALNYLAM or RIBOPHARMA has the sole responsibility, to, at ALNYLAM's or RIBOPHARMA's discretion, DOV shall file, conduct ex parte and inter partes prosecution prosecute and maintain in the Territory, upon appropriate consultation with MERCK, the ALNYLAM RNAi DOV Patent Rights owned by ALNYLAM or licensed by RIBOPHARMA to ALNYLAM and licensed to MERCK under this Agreement; and (b) . MERCK has the sole responsibility, to, at its discretion, shall file, conduct ex parte and inter partes prosecution prosecute and maintain in the Territory Territory, upon appropriate consultation with DOV, the MERCK RNAi Joint Patent Rights and the patent rights contained in the MERCK RNAi Novel Target IP licensed to ALNYLAM under this Agreement. provided, however, that, with respect to Joint Collaboration Inventions, ALNYLAM shall have the first right to file, conduct ex parte and inter partes prosecution and maintain patent applications and patents for such Joint Collaboration InventionsRights. With respect to Joint Collaboration DOV Information and Inventions, ALNYLAM DOV may elect not to file, conduct ex parte file and inter partes prosecution and/or maintain patent applications and patents and, if so, MERCK, and/or a law firm acting on its behalf, DOV shall notify MERCK and MERCK shall have the right to filefile such patent applications. In such event, conduct ex parte DOV shall execute such documents and inter partes perform such acts at DOV's expense as may be reasonably necessary in a timely manner to allow MERCK to continue such prosecution on behalf of and maintain/or patent applications and patents, as applicablein the name of DOV. In each case abovecase, with respect to Joint Collaboration Inventions, (a) the filing Party shall: (i) shall give the non-filing Party an opportunity to review the text of the applicationsapplication before filing, (ii) shall consult with the non-filing Party with respect thereto thereto, and give good faith consideration to the requests and suggestions of the non-filing Party with respect to the filing thereof, (iii) shall supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number. For those patents and patent applications covered in this Section 7.1, and (iv) each filing Party shall keep the other non-filing Party advised on at least a quarterly basis of the status of the actual and prospective patent filings; and (b) the prosecuting Party filings and, upon request, shall give the non-prosecuting Party provide advance copies of all correspondence from and to the U.S. and all other patent offices any papers related to the filing, prosecution and maintenance of patents or such patent applications covering such Joint Collaboration Inventions and give good faith consideration to the requests and suggestions of the non-prosecuting Party with respect to the prosecution thereoffilings. ALNYLAM DOV shall promptly give notice to MERCK of the grant, lapse, revocation, surrender, invalidation or abandonment of any ALNYLAM RNAi DOV Patent Rights licensed to MERCK. MERCK shall promptly give notice to ALNYLAM of for which DOV is responsible for the grantfiling, lapse, revocation, surrender, invalidation or abandonment of any MERCK RNAi Patent Rights prosecution and patent rights contained in MERCK RNAi Novel Target IP licensed to ALNYLAMmaintenance. With respect to all filings, ex parte and inter partes prosecution and maintenance hereunder (including, without limitation, any interference, opposition, reexamination or reissue proceeding)filings hereunder, the filing, prosecuting or maintaining filing Party shall be responsible for payment of all costs and expenses related to such filings, prosecution or maintenance; provided, however, that, with respect to Joint Technology Collaboration Inventions, the Parties shall equally share all costs and expenses related to such filings, prosecution or. [LOGO] Restricted Confidential Limited Access

Patent Provisions. 7.1 OWNERSHIP, FILING, PROSECUTION AND MAINTENANCE OF PATENTS 7.1.1 deCODE shall retain all right, title and interest in and to deCODE Generalized Technology, deCODE Genomics Data, deCODE Know-How, deCODE Prior Know-How, deCODE Collaboration Patents and deCODE Patents, subject to the licenses granted to MERCK pursuant to Section 3.1. 7.1.2 MERCK shall retain all right, title and interest in and to the MERCK Know-How, MERCK Collaboration Patents and MERCK Patents, subject to the licenses granted to deCODE pursuant to Section 3.1. 7.1.3 Subject to the licenses granted hereunder: (i) rights to deCODE Information and Inventions shall belong to deCODE; (ii) rights to MERCK Information and Inventions shall belong to MERCK; and (iii) rights to Joint Information and Inventions shall belong jointly to deCODE and to MERCK. Except as otherwise provided expressly set forth in Schedule 2.14.3.3this Agreement, the Parties agree that:shall follow United States laws of inventorship, ownership, and patenting rights including a Party’s ability to exploit joint inventions without accounting to each other. (a) ALNYLAM or RIBOPHARMA has the sole responsibility, to, at ALNYLAM's or RIBOPHARMA's discretion, 7.1.4 deCODE agrees to file, conduct ex parte and inter partes prosecution prosecute and maintain in the Territory, upon appropriate consultation with MERCK, the ALNYLAM RNAi Patent Rights owned by ALNYLAM or licensed by RIBOPHARMA to ALNYLAM and licensed to MERCK under this Agreement; and (b) MERCK has the sole responsibilityPROVIDED, to, at its discretion, file, conduct ex parte and inter partes prosecution and maintain in the Territory the MERCK RNAi Patent Rights and the patent rights contained in the MERCK RNAi Novel Target IP licensed to ALNYLAM under this Agreement. provided, however, thatHOWEVER, with respect to Joint Collaboration Information and Inventions, ALNYLAM MERCK shall have the first right to file, conduct ex parte and inter partes prosecution and maintain file patent applications and patents for such Joint Collaboration Information and Inventions. With respect to Joint Collaboration deCODE Information and Inventions, ALNYLAM deCODE may elect not to file, conduct ex parte file and inter partes prosecution and/or maintain patent applications and patents and, if so, MERCK, and/or a law firm acting on its behalf, so MERCK shall have the right to filefile patent applications. In such event, conduct ex parte deCODE shall execute such documents and inter partes perform such acts at deCODE’s expense as may be reasonably necessary to effect an assignment of such Patent Rights to MERCK in a timely manner to allow MERCK to continue such prosecution and maintain/or patent applications and patents, as applicablemaintenance. In each case abovecase, with respect to Joint Collaboration Inventions, (a) the filing Party shall: (i) shall give the non-filing Party an opportunity to review the text of the applicationsapplication before filing, (ii) shall consult with the non-filing Party with respect thereto thereto, and give good faith consideration to the requests and suggestions of the non-filing Party with respect to the filing thereof, (iii) shall supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number, and (iv) . deCODE shall keep the other Party MERCK advised on at least a quarterly basis of the status of the actual and prospective patent filings; filings and (b) upon the prosecuting Party shall give the non-prosecuting Party request of MERCK, provide advance copies of all correspondence from and to the U.S. and all other patent offices any papers related to the filing, prosecution and maintenance of patents or such patent applications covering such Joint Collaboration Inventions and give good faith consideration to the requests and suggestions of the non-prosecuting Party with respect to the prosecution thereoffilings. ALNYLAM deCODE shall promptly give notice to MERCK of the grant, lapse, revocation, surrender, invalidation or abandonment of any ALNYLAM RNAi Patent Rights licensed to MERCK. MERCK shall promptly give notice to ALNYLAM of for which deCODE is responsible for the grantfiling, lapse, revocation, surrender, invalidation or abandonment of any MERCK RNAi Patent Rights prosecution and patent rights contained in MERCK RNAi Novel Target IP licensed to ALNYLAMmaintenance. With respect to all filings, ex parte and inter partes prosecution and maintenance hereunder (including, without limitation, any interference, opposition, reexamination or reissue proceeding)filings hereunder, the filing, prosecuting or maintaining filing Party shall be responsible for payment of all costs and expenses related to such filings, except with respect to filings related to Joint Collaboration Patents, the costs and expenses of which shall be borne equally by the Parties. In the event that a Party elects not to contribute to the costs and expenses incurred in connection with a filing related to a Joint Collaboration Patent in any country, such Party shall be deemed to have abandoned its rights with respect to such Joint Collaboration Patent in such country. 7.2 OPTION OF MERCK TO PROSECUTE AND MAINTAIN PATENTS deCODE shall give notice to MERCK of any desire to cease prosecution and/or maintenance of Patent Rights on a country by country basis in the Territory and, in such case, shall permit MERCK, at its sole discretion, to continue prosecution or maintenance of such Patent Rights at its own expense. If MERCK elects to continue prosecution or maintenance or to file based on deCODE’s election not to file pursuant to Section 7.1 above, deCODE shall execute such documents and perform such acts at deCODE’s expense as may be reasonably necessary to effect an assignment of such Patent Rights to MERCK in a timely manner to allow MERCK to continue such prosecution or maintenance; provided. 7.3 INTERFERENCE, howeverOPPOSITION, thatREEXAMINATION AND REISSUE (a) deCODE shall, within ten (10) days of learning of such event, inform MERCK of any request for, or filing or declaration of, any interference, opposition, or reexamination relating to Patent Rights. MERCK and deCODE shall thereafter consult and cooperate fully to determine a course of action with respect to Joint Technology Collaboration Inventionsany such proceeding. MERCK shall have the right to review and approve any submission to be made in connection with such proceeding. (b) deCODE shall not initiate any reexamination, interference or reissue proceeding relating to Patent Rights without the prior written consent to MERCK, which consent shall not be unreasonably withheld. (c) In connection with any interference, opposition, reissue, or reexamination proceeding relating to Patent Rights, MERCK and deCODE will cooperate fully and will provide each other with any information or assistance that either may reasonably request. deCODE shall keep MERCK informed of developments in any such action or proceeding, including, to the extent permissible by law, consultation and approval of any settlement, the Parties status of any settlement negotiations and the terms of any offer related thereto. (d) deCODE shall equally share all bear the expense of any interference, opposition, reexamination, or reissue proceeding relating to Patent Rights, except with respect to proceedings related to Joint Collaboration Patents, the costs and expenses of which shall be borne equally by the Parties. In the event that a Party elects not to contribute to the costs and expenses incurred in connection with a proceeding in a country related to a Joint Collaboration Patent, such filings, prosecution orParty shall be deemed to have abandoned its rights with respect to such Joint Collaboration Patent in that country.

Patent Provisions. 7.1 OWNERSHIP, FILING, PROSECUTION AND MAINTENANCE OF PATENTS 7.1.1 deCODE shall retain all right, title and interest in and to deCODE Generalized Technology, deCODE Genomics Data, deCODE Know-How, deCODE Prior Know-How, deCODE Collaboration Patents and deCODE Patents, subject to the licenses granted to MERCK pursuant to Section 3.1. 7.1.2 MERCK shall retain all right, title and interest in and to the MERCK Know-How, MERCK Collaboration Patents and MERCK Patents, subject to the licenses granted to deCODE pursuant to Section 3.1. 7.1.3 Subject to the licenses granted hereunder: (i) rights to deCODE Information and Inventions shall belong to deCODE; (ii) rights to MERCK Information and Inventions shall belong to MERCK; and (iii) rights to Joint Information and Inventions shall belong jointly to deCODE and to MERCK. Except as otherwise provided expressly set forth in Schedule 2.14.3.3this Agreement, the Parties agree that:shall follow United States laws of inventorship, ownership, and patenting rights including a Party's ability to exploit joint inventions without accounting to each other. (a) ALNYLAM or RIBOPHARMA has the sole responsibility, to, at ALNYLAM's or RIBOPHARMA's discretion, 7.1.4 deCODE agrees to file, conduct ex parte and inter partes prosecution prosecute and maintain in the Territory, upon appropriate consultation with MERCK, the ALNYLAM RNAi Patent Rights owned by ALNYLAM or licensed by RIBOPHARMA to ALNYLAM and licensed to MERCK under this Agreement; and (b) MERCK has the sole responsibilityPROVIDED, to, at its discretion, file, conduct ex parte and inter partes prosecution and maintain in the Territory the MERCK RNAi Patent Rights and the patent rights contained in the MERCK RNAi Novel Target IP licensed to ALNYLAM under this Agreement. provided, however, thatHOWEVER, with respect to Joint Collaboration Information and Inventions, ALNYLAM MERCK shall have the first right to file, conduct ex parte and inter partes prosecution and maintain file patent applications and patents for such Joint Collaboration Information and Inventions. With respect to Joint Collaboration deCODE Information and Inventions, ALNYLAM deCODE may elect not to file, conduct ex parte file and inter partes prosecution and/or maintain patent applications and patents and, if so, MERCK, and/or a law firm acting on its behalf, so MERCK shall have the right to filefile patent applications. In such event, conduct ex parte deCODE shall execute such documents and inter partes perform such acts at deCODE's expense as may be reasonably necessary to effect an assignment of such Patent Rights to MERCK in a timely manner to allow MERCK to continue such prosecution and maintain/or patent applications and patents, as applicablemaintenance. In each case abovecase, with respect to Joint Collaboration Inventions, (a) the filing Party shall: (i) shall give the non-filing Party an opportunity to review the text of the applicationsapplication before filing, (ii) shall consult with the non-filing Party with respect thereto thereto, and give good faith consideration to the requests and suggestions of the non-filing Party with respect to the filing thereof, (iii) shall supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number, and (iv) . deCODE shall keep the other Party MERCK advised on at least a quarterly basis of the status of the actual and prospective patent filings; filings and (b) upon the prosecuting Party shall give the non-prosecuting Party request of MERCK, provide advance copies of all correspondence from and to the U.S. and all other patent offices any papers related to the filing, prosecution and maintenance of patents or such patent applications covering such Joint Collaboration Inventions and give good faith consideration to the requests and suggestions of the non-prosecuting Party with respect to the prosecution thereoffilings. ALNYLAM deCODE shall promptly give notice to MERCK of the grant, lapse, revocation, surrender, invalidation or abandonment of any ALNYLAM RNAi Patent Rights licensed to MERCK. MERCK shall promptly give notice to ALNYLAM of for which deCODE is responsible for the grantfiling, lapse, revocation, surrender, invalidation or abandonment of any MERCK RNAi Patent Rights prosecution and patent rights contained in MERCK RNAi Novel Target IP licensed to ALNYLAMmaintenance. With respect to all filings, ex parte and inter partes prosecution and maintenance hereunder (including, without limitation, any interference, opposition, reexamination or reissue proceeding)filings hereunder, the filing, prosecuting or maintaining filing Party shall be responsible for payment of all costs and expenses related to such filings, prosecution or maintenance; provided, however, that, except with respect to filings related to Joint Technology Collaboration InventionsPatents, the Parties shall equally share all costs and expenses of which shall be borne equally by the Parties. In the event that a Party elects not to contribute to the costs and expenses incurred in connection with a filing related to a Joint Collaboration Patent in any country, such filings, prosecution orParty shall be deemed to have abandoned its rights with respect to such Joint Collaboration Patent in such country.