Common use of Patent Term Extension and Supplementary Protection Certificate Clause in Contracts

Patent Term Extension and Supplementary Protection Certificate. As between the Parties, regardless of which Party is filing, prosecuting and maintaining any Licensed Patent, PhaseBio Selected Patent or Joint Patent pursuant to this Section 5.2, the Parties shall attempt to make decisions by mutual agreement regarding patent term extensions, in the Territory, including the United States with respect to extensions pursuant to 35 U.S.C. §156 et. seq. and in other jurisdictions pursuant to supplementary protection certificates, and in all jurisdictions with respect to any other extensions that are now or become available in the future, wherever applicable, for the Licensed Patents, the PhaseBio Selected Patents and Joint Patents and with respect to Licensed Compounds and Licensed Products, in each case including whether or not to so apply. If, with respect to any Licensed Compound or Licensed Product and a country, the Parties cannot agree on which Licensed Patent, PhaseBio Selected Patent or Joint Patent as to which the term is to be extended in such country, then with respect to Licensed Patents, PhaseBio Selected Patents and Joint Patents in such country, the Parties shall mutually agree on a Third Party patent lawyer (whose costs shall be borne equally (50/50) between the Parties) and shall give such lawyer instructions to resolve such disagreement in a manner designed to maximize the period of exclusivity for such Licensed Compound or Licensed Product, and the decision of such lawyer shall be binding on the Parties. For clarity, Licensee shall have the sole right to make decisions regarding, and shall have the sole right to *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. apply for, patent term extensions in the Territory with respect to PhaseBio Patents that are not PhaseBio Selected Patents.

Patent Term Extension and Supplementary Protection Certificate. As With respect to each Licensed Product, as between the Parties, regardless of which Party is filingexcept as provided in the next sentence (a) AbbVie shall have the sole right, prosecuting and maintaining any Licensed Patentafter consultation with I-Mab, PhaseBio Selected Patent or Joint Patent pursuant to this Section 5.2, the Parties shall attempt to make decisions by mutual agreement regarding regarding, and to apply for, patent term extensions, extensions in the AbbVie Territory, including in the United States with respect to extensions pursuant to 35 U.S.C. §§ 156 et. seq. and in other jurisdictions in the AbbVie Territory pursuant to supplementary protection certificates, and in all jurisdictions in the AbbVie Territory with respect to any other extensions that are now or become available in the future, including pediatric exclusivity, wherever applicable, for the Licensed Product Patents, the PhaseBio Selected Patents and Joint Patents and with respect to Licensed Compounds and Licensed Productsany AbbVie Patent, in each case including whether or not to do so apply. If, with respect to any Licensed Compound or Licensed Product and a country, the Parties cannot agree on determination of which Licensed Patent, PhaseBio Selected Patent or Joint Patent as to which the term is to be extended in such country, then with respect to Licensed Patents, PhaseBio Selected Patents and Joint Patents in such country, the Parties shall mutually agree on a Third Party patent lawyer (whose costs patent(s) shall be borne equally extended; (50/50b) between the Parties) and shall give such lawyer instructions to resolve such disagreement in a manner designed to maximize the period of exclusivity for such Licensed Compound or Licensed Product, and the decision of such lawyer shall be binding on the Parties. For clarity, Licensee I-Mab shall have the sole right right, after consultation with AbbVie, to make decisions regarding, and shall have the sole right to *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. apply for, patent term extensions in the I-Mab Territory, including pursuant to supplementary protection certificates, and in all jurisdictions in the I-Mab Territory with respect to PhaseBio Patents any other extensions that are now or become available in the future, including pediatric exclusivity, wherever applicable, for the Product Patents, Joint Patents and other I-Mab Patents, in each case including whether or not PhaseBio Selected Patentsto do so and determination of which patent(s) shall be extended. If a Party has not applied for any patent term extension in a jurisdiction in its Respective Territory with respect to a Licensed Product, and has decided not to apply for any patent term extension in such jurisdiction for such Licensed Product, such Party shall promptly notify the other Party of such decision and, upon such notification, the other Party shall have the right, but not an obligation, to apply for the patent term extension for such Licensed Product in such jurisdiction at its sole cost and expense. Each Party shall provide prompt and reasonable assistance, as requested by the other Party applying for a patent term extension, including by taking such action as patent holder as is required under any Applicable Law to obtain any such extension or supplementary protection certificate where the other Party is applying for the patent term extension as permitted under this Section 11.3.4.

Patent Term Extension and Supplementary Protection Certificate. As between Allergan shall have the Parties, regardless of which Party is filing, prosecuting and maintaining any Licensed Patent, PhaseBio Selected Patent or Joint Patent pursuant to this Section 5.2, the Parties shall attempt sole right to make decisions by mutual agreement regarding regarding, and Allergan shall have the sole right to apply for, patent term extensions, in the Territory, including the United States with respect to extensions pursuant to 35 U.S.C. §§ 156 et. seq. and in other jurisdictions pursuant to supplementary protection certificates, and in all jurisdictions with respect to any other extensions that are now or become available in the future, wherever applicable, for the Licensed Product-Specific Patents, the PhaseBio Selected Joint Collaboration Patents and Joint Allergan Collaboration Patents and with respect to Licensed Compounds and the Licensed Products, in each case including whether or not to so apply. IfIn addition, with respect to any Licensed Compound or Licensed Product and a country, the Parties cannot agree on which Licensed Patent, PhaseBio Selected Patent or Joint Patent as to which the term is to be extended in such country, then with respect to Licensed Patents, PhaseBio Selected Patents and Joint Patents in such country, the Parties shall mutually agree on a Third Party patent lawyer (whose costs shall be borne equally (50/50) between the Parties) and shall give such lawyer instructions to resolve such disagreement in a manner designed to maximize the period of exclusivity for such Licensed Compound or Licensed Product, and the decision of such lawyer shall be binding on the Parties. For clarity, Licensee Allergan shall have the sole right to make decisions regarding, and Allergan shall have the sole right to *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENTapply for, MARKED BY [***]patent term extensions, in the Territory, including the United States with respect to extensions pursuant to 35 U.S.C. § 156 et. seq. and in other jurisdictions pursuant to supplementary protection certificates, and in all jurisdictions with respect to any other extensions that are now or become available in the future, wherever applicable, for Orange Book Patents that are not Product-Specific Patents, Joint Collaboration Patents or Allergan Collaboration Patents (the “General Orange Book Patents”) with respect to the Licensed Products, in each case including whether or not to so apply, except to the extent that, on a General Orange Book Patent-by-General Orange Book Patent basis, at the time Allergan desires to elect to THE COMPANY HAS BEEN OMITTED AND FILED SEPARATELY WITH REQUESTED AN ORDER FROM THE SECURITIES AND EXCHANGE COMMISSION (THE “COMMISSION”) PURSUANT TO RULE 24B-2 OF 406 UNDER THE SECURITIES EXCHANGE ACT OF 19341933, AS AMENDED, GRANTING CONFIDENTIAL TREATMENT TO SELECTED PORTIONS. ACCORDINGLY, THE CONFIDENTIAL PORTIONS HAVE BEEN OMITTED FROM THIS EXHIBIT, AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION. OMITTED PORTIONS ARE INDICATED IN THIS EXHIBIT WITH “*****”. apply for, a patent term extensions in the Territory extension to any such General Orange Book Patent with respect to PhaseBio a Licensed Product, (a) an application for patent term extension has already been made by Exicure or any of its Affiliates or its or their licensees with respect to a product in the applicable jurisdiction, (b) such product has already received Regulatory Approval in such jurisdiction (and such Regulatory Approval occurred prior to the Regulatory Approval of the applicable Licensed Product for which Allergan desires to elect to apply a patent term extension to such General Orange Book Patent), and (c) Exicure or any of its Affiliates or its or their licensees has elected to apply its patent term extension with respect to such product to such General Orange Book Patent. If Allergan desires to apply for a patent term extension for any Exicure Patents for which Allergan has a right to apply for patent term extension under this Section 8.6, then Allergan shall notify Exicure and shall consider in good faith Exicure’s reasonable comments with respect thereto, provided that are not PhaseBio Selected PatentsAllergan shall have the final decision with respect to any such listing. Exicure shall provide prompt and reasonable assistance, as requested by Allergan, including by taking such action as is required of the Regulatory Approval holder or Patent owner under any applicable Law to obtain such extension or supplementary protection certificate.