Common use of Prosecution and Maintenance of Licensed Patent Rights Clause in Contracts

Prosecution and Maintenance of Licensed Patent Rights. Except as otherwise agreed by the Parties, beginning on the Effective Date, TARCANTA and TARCANTA LTD. shall be responsible for the preparation, filing, prosecution and maintenance of any and all patent applications and patents in the Territory that are included in the Licensed Patent Rights, including all payment obligations, with the exception of (a) those patents and patent applications designated in Exhibit A as related to the "Neisseria P64K Protein" technology, which shall be prepared, filed, prosecuted and maintained by HEBER or its Licensor, consistent with its obligations to CIMAB, and (b) the patents and patent applications designated in Exhibit A as "HER-1" technology, which shall be prepared, filed, prosecuted and maintained by CIM, in consultation with TARCANTA and TARCANTA LTD., consistent with its obligations to CIMAB and with CIMAB's obligations to TARCANTA and TARCANTA LTD.; provided, however, that if the Parties agree in the future to separate the claims thereof into applications which solely cover the HER-1 technology, then TARCANTA and TARCANTA LTD. shall from such point forward, bear the responsibility for the preparation, filing, prosecution and maintenance of patents and patent applications which relate solely to the HER-1 technology. 10.3.1 CIMAB shall execute all necessary documents and otherwise provide reasonable assistance, free of charge, to TARCANTA and TARCANTA LTD. for all actions TARCANTA and TARCANTA LTD. reasonably deem necessary to undertake relating to the preparation, filing, prosecution, and maintenance of any and all patent applications and patents in the Territory that are included in the Licensed Patent Rights. 10.3.2 CIMAB shall promptly inform TARCANTA and TARCANTA LTD. as to all matters that come to its attention or to the attention of its Licensors that may affect the preparation, filing, prosecution or maintenance of the Licensed Patent Rights in the Territory or elsewhere, including, without limitation, all information with respect to the preparation, filing, prosecution and maintenance of those patent applications designated in Exhibit A as related to the "Neisseria P64K Protein" technology and to the "HER-1" technology. 10.3.3 Upon thirty (30) days written notice to CIMAB, TARCANTA and/or TARCANTA LTD. may abandon their rights under this Agreement in any country(ies) in the Territory and thereafter owe no payment under Section 10.3 or any other obligation of this Agreement in those country(ies) as of the effective date of such written notice. CIMAB shall thereafter have a right, but not an obligation, to assume the responsibility for the preparation, filing, presentation and maintenance of any and all patent applications and patents that are included in the Licensed Patent Rights in such country(ies) in the Territory where TARCANTA or TARCANTA LTD. has elected to abandon its rights. In the event that CIMAB has assumed the responsibility for the preparation, filing, presentation and maintenance of any and all patent applications and patents that are included in the Licensed Patent Rights in such country(ies) in the Territory where TARCANTA and/or TARCANTA LTD. have elected to abandon such rights, TARCANTA and TARCANTA LTD.'s rights, as the case may be, with respect to the Licensed Product in such country(ies) under this Agreement shall no longer be of any effect, and YMB's rights under the CIMAB-CIMYM Vaccine Agreement with respect to such country(ies), but only with respect to such country(ies), shall be reinstated.

Prosecution and Maintenance of Licensed Patent Rights. Except As between the parties but subject to any rights and obligations of Opus to the NIH, the parties agree as otherwise agreed by the Partiesfollows: 9.1.1 Juno shall, beginning on the Effective Date, TARCANTA [***] use commercially reasonable efforts to Prosecute and TARCANTA LTD. shall be responsible for the preparation, filing, prosecution and maintenance of any and all patent applications and patents in the Territory that are included in Maintain the Licensed Patent Rights, using patent counsel of its choice reasonably acceptable to Opus. Promptly after the Effective Date, subject to the terms of this Section 9.1, Juno shall assume control of the Prosecution and Maintenance of the Licensed Patent Rights. Juno shall keep Opus reasonably informed regarding matters related to the Prosecution and Maintenance of each patent or patent application within the Licensed Patent Rights and provide Opus the reasonable opportunity to review and comment in advance on material submissions to any patent office relating thereto, and shall in good faith consider such comments before making any such material submissions. Juno shall provide copies of all correspondence relating to prosecution of Licensed Patent Rights to Opus. 9.1.2 If Juno elects to abandon any patent or patent application within the Licensed Patent Rights, it shall notify Opus at least [***] in advance of any relevant deadline or event relating to any such Licensed Patent Right, in which case Opus shall have the right (but not the obligation) to control the Prosecution and Maintenance of such patents and applications (including any patent issuing therefrom), [***]. From and after the effective date of such notice, such patent or patent application shall cease to be within the Licensed Patent Rights for all payment obligationspurposes of this Agreement, and all rights and obligations of Juno (including the obligation to pay costs associated with Prosecution and Maintenance) with respect thereto shall terminate and revert to Opus. 9.1.3 Juno acknowledges that the NIH controls Prosecution of the Licensed Patent Rights, with the exception of Opus having certain rights to review. Juno acknowledges and agrees that (a) those patents the rights and patent applications designated in Exhibit A as related obligations under this Section 9.1 are subject to the "Neisseria P64K Protein" technology, which shall be prepared, filed, prosecuted and maintained by HEBER or its Licensor, consistent rights of the NIH with its obligations respect to CIMABthe Licensed Patent Rights, and (b) the patents and patent applications designated in Exhibit A as "HER-1" technology, which shall be prepared, filed, prosecuted and maintained by CIM, in consultation with TARCANTA and TARCANTA LTD., consistent with its Opus’ obligations to CIMAB and with CIMAB's obligations to TARCANTA and TARCANTA LTD.; provided, however, that if the Parties agree in the future to separate the claims thereof into applications which solely cover the HER-1 technology, then TARCANTA and TARCANTA LTD. shall from such point forward, bear the responsibility for the preparation, filing, prosecution and maintenance of patents and patent applications which relate solely under this Agreement only apply to the HER-1 technology. 10.3.1 CIMAB shall execute all necessary documents and otherwise provide reasonable assistance, free extent of charge, Opus’ rights with respect to TARCANTA and TARCANTA LTD. for all actions TARCANTA and TARCANTA LTD. reasonably deem necessary to undertake relating to the preparation, filing, prosecution, and maintenance of any and all patent applications and patents participation in the Territory that are included in the Licensed Patent Rights. 10.3.2 CIMAB shall promptly inform TARCANTA and TARCANTA LTD. as to all matters that come to its attention or to the attention of its Licensors that may affect the preparation, filing, prosecution or maintenance of Prosecuting the Licensed Patent Rights in under the Territory or elsewhere, including, without limitation, all information with respect to the preparation, filing, prosecution and maintenance of those patent applications designated in Exhibit A as related to the "Neisseria P64K Protein" technology and to the "HER-1" technology. 10.3.3 Upon thirty (30) days written notice to CIMAB, TARCANTA and/or TARCANTA LTD. may abandon their rights under this Agreement in any country(ies) in the Territory and thereafter owe no payment under Section 10.3 or any other obligation of this Agreement in those country(ies) as of the effective date of such written notice. CIMAB shall thereafter have a right, but not an obligation, to assume the responsibility for the preparation, filing, presentation and maintenance of any and all patent applications and patents that are included in the Licensed NIH Patent Rights in such country(ies) in the Territory where TARCANTA or TARCANTA LTD. has elected to abandon its rights. In the event that CIMAB has assumed the responsibility for the preparation, filing, presentation and maintenance of any and all patent applications and patents that are included in the Licensed Patent Rights in such country(ies) in the Territory where TARCANTA and/or TARCANTA LTD. have elected to abandon such rights, TARCANTA and TARCANTA LTD.'s rights, as the case may be, with respect to the Licensed Product in such country(ies) under this Agreement shall no longer be of any effectLicenses, and YMB's Opus will grant to Juno all rights that Opus receives under the CIMAB-CIMYM Vaccine Agreement with respect to such country(ies), but only with respect to such country(ies), shall be reinstatedNIH Patent Licenses. [***].

Prosecution and Maintenance of Licensed Patent Rights. Except as otherwise agreed by the Parties, beginning on (a) As of the Effective Date, TARCANTA and TARCANTA LTD. subject to subparagraph (c) below, Licensee shall be responsible assume responsibility for the preparation, filing, prosecution Prosecution and maintenance Maintenance of any and all patent applications and patents Licensed Patent Rights in the Territory and shall have the first right, at is sole expense and discretion, to Prosecute and Maintain all Licensed Patent Rights in the Territory using patent counsel of its choice. Licensor shall use its best efforts to transition the Prosecution and Maintenance of all Licensed Patent Rights to Licensee promptly following the Effective Date and to reasonably assist Licensee in such transition and assumption. In the event Licensee fails or chooses not to Prosecute or Maintain any Licensed Patent Rights in a country in the Territory, Licensor shall have the right, but not the obligation, at its sole expense and discretion, to Prosecute and Maintain such Licensed Patent Rights in such country. (b) Licensor shall have responsibility for the Prosecution and Maintenance of all Licensed Patent Rights outside the Territory and shall have the first right, at is sole expense and discretion, to Prosecute and Maintain all Licensed Patent Rights outside the Territory using patent counsel of its choice. In the event Licensor fails or chooses not to Prosecute or Maintain any Licensed Patent Rights in a country outside the Territory, Licensee shall have the right, but not the obligation, at its sole expense and discretion, to Prosecute and Maintain such Licensed Patent Rights in such country. (c) With respect to the Prosecution and Maintenance of Licensed Patent Rights, the Prosecuting Party shall: (i) instruct its patent counsel to furnish the other Party with copies of all correspondence relating to the Licensed Patent Rights received from the United States Patent and Trademark Office and any other patent office promptly after receipt; (iii) instruct such patent counsel to furnish the other Party with copies of all correspondence relating to the Licensed Patent Rights sent to the United States Patent and Trademark Office and any other patent office promptly after it is sent; (iv) instruct such patent counsel to furnish the other Party with copies of all proposed filings or other correspondence to the United States Patent and Trademark Office and any other patent office sufficiently in advance of such filing to permit the other Party a reasonable opportunity to review and comment on such response; and (v) supply the other Party with a copy of each patent application within the Licensed Patent Rights as filed, together with notice of its filing date and serial number. The Prosecuting Party shall consider in good faith the comments and requests of the other Party with respect to the Prosecution and Maintenance of the applicable Licensed Patent Rights but will retain the final decision making authority with respect to the Licensed Patent Rights it is prosecuting. Notwithstanding the foregoing, to the extent any claims of any Licensed Patent Rights in the Territory are directed to subject matter other than Licensed Compound or Licensed Product or its or their manufacture or use, Licensee shall take direction from Licensor with respect to the prosecution of such claims and shall implement Licensor’s requests with respect to such prosecution, it being understood that are included Licensor shall have the final decision making authority with respect to the Prosecution and Maintenance of such claims to the extent not directed to Licensed Compound or Licensed Product or its or their manufacture or use. (d) During the Term, Licensee shall notify Licensor at least [***] in advance of the next deadline if (A) Licensee decides that it does not wish to continue paying for the Prosecution and Maintenance of a particular patent or patent application within the Licensed Patent Rights anywhere in the world for which no substitute has been filed, or (B) Licensee decides that it intends to expressly abandon claim scope in a particular patent or patent application within the Licensed Patent Rights. In such cases (A) or (B), including all payment obligations, with Licensor shall have the exception of (a) those patents and patent applications designated in Exhibit A as related right to the "Neisseria P64K Protein" technology, which shall be prepared, filed, prosecuted and maintained by HEBER or its Licensor, consistent with its obligations to CIMAB, and (b) the patents and patent applications designated in Exhibit A as "HER-1" technology, which shall be prepared, filed, prosecuted and maintained by CIM, in consultation with TARCANTA and TARCANTA LTD., consistent with its obligations to CIMAB and with CIMAB's obligations to TARCANTA and TARCANTA LTD.; provided, however, that if the Parties agree in the future to separate the claims thereof into applications which solely cover the HER-1 technology, then TARCANTA and TARCANTA LTD. shall from such point forward, bear the assume sole responsibility for Prosecution and Maintenance of the preparation, filing, prosecution and maintenance of patents and respective patent applications which relate solely to the HER-1 technology. 10.3.1 CIMAB shall execute all necessary documents and otherwise provide reasonable assistance, free of charge, to TARCANTA and TARCANTA LTD. for all actions TARCANTA and TARCANTA LTD. reasonably deem necessary to undertake relating to the preparation, filing, prosecution, and maintenance of any and all or patent applications and patents in the Territory that are included in application within the Licensed Patent Rights. If the Licensor assumes such responsibility, with respect to clause (B), such sole responsibility will be assumed for the claim scope by filing a continuing application restricted to such abandoned claim scope. If Licensor assumes such responsibility, then Licensor shall be deemed the new Prosecuting Party and: (1) Licensor may designate any counsel of its choice to handle the Prosecution and Maintenance of such patent or patent application or of the continuing application; (2) Licensor, shall initially bear the cost of such Prosecution and Maintenance but shall be entitled to recover its out-of-pocket costs for such Prosecution and Maintenance from Licensee on a quarterly basis, provided that if Licensee does not wish to reimburse such costs it shall so inform Licensor and Licensee’s licenses under such patent or patent application shall terminate; and (3) Licensee shall cooperate reasonably, at its sole cost and expense, with Licensor in such Prosecution and Maintenance. 10.3.2 CIMAB (e) Both Parties shall promptly inform TARCANTA reasonably cooperate with each other and TARCANTA LTD. as to all matters that come to its attention or to the attention of its Licensors that may affect the preparation, filing, prosecution or maintenance patent counsel in Prosecution and Maintenance of the Licensed Patent Rights in the Territory or elsewhereall countries, including, without limitationas applicable, (i) providing patent counsel with data and other information as appropriate with respect thereto, (ii) providing any necessary powers of attorney (including limited powers of attorney) and (iii) executing any other required documents or instruments for such Prosecution and Maintenance. (f) The Party controlling the Prosecution and Maintenance of the applicable Licensed Patent Rights in accordance with Section 7.2(a), 7.2(b) or 7.2(c), as applicable, is referred to as the “Prosecuting Party”. Except as otherwise set forth in Section 7.2(b), the Prosecuting Party shall be responsible for all information fees and costs charged by patent counsel with respect to the preparation, filing, prosecution Prosecution and maintenance of those patent applications designated in Exhibit A as related to the "Neisseria P64K Protein" technology and to the "HER-1" technology. 10.3.3 Upon thirty (30) days written notice to CIMAB, TARCANTA and/or TARCANTA LTD. may abandon their rights under this Agreement in any country(ies) in the Territory and thereafter owe no payment under Section 10.3 or any other obligation of this Agreement in those country(ies) as Maintenance of the effective date of such written notice. CIMAB shall thereafter have a right, but not an obligation, to assume the responsibility for the preparation, filing, presentation and maintenance of any applicable Licensed Patent Rights and all other out-of-pocket costs and expenses incurred by the Prosecuting Party in connection with such Prosecution and Maintenance of the applicable Licensed Patent Rights during the Term. For clarity, such expenses shall not include any expenses of the other Party incurred by such other Party in connection with (i) its rights to review and comment on patent applications and patents that are included in prosecution, (ii) its rights to undertake enforcement actions, or (iii) any actions undertaken by such other Party other than at the Prosecuting Party’s request. The Prosecuting Party also agrees not to knowingly take any action to materially diminish the value of the Licensed Patent Rights in such country(ies) in the Territory where TARCANTA or TARCANTA LTD. has elected to abandon its rights. In the event that CIMAB has assumed the responsibility for the preparation, filing, presentation and maintenance of any and all patent applications and patents that are included in the Licensed Patent Rights in such country(ies) in the Territory where TARCANTA and/or TARCANTA LTD. have elected to abandon such rights, TARCANTA and TARCANTA LTDRights.'s rights, as the case may be, with respect to the Licensed Product in such country(ies) under this Agreement shall no longer be of any effect, and YMB's rights under the CIMAB-CIMYM Vaccine Agreement with respect to such country(ies), but only with respect to such country(ies), shall be reinstated.

Prosecution and Maintenance of Licensed Patent Rights. Except as otherwise agreed by the Parties, beginning on the Effective Date, TARCANTA and TARCANTA LTD. shall be responsible for the preparation, filing, prosecution and maintenance of any and all patent applications and patents in the Territory that are included in the Licensed Patent Rights, including all payment obligations, with the exception of (a) those patents and patent applications designated in Exhibit A as related to the "Neisseria P64K Protein" technology, which shall be prepared, filed, prosecuted and maintained by HEBER or its Licensor, consistent with its obligations to CIMAB, and (b) the patents and patent applications designated in Exhibit A as "HER-1" technology, which shall be prepared, filed, prosecuted and maintained by CIM, in consultation with TARCANTA and TARCANTA LTD., consistent with its obligations to CIMAB and with CIMAB's obligations to TARCANTA and TARCANTA LTD.; provided, however, that if the Parties agree in the future to separate the claims thereof into applications which solely cover the HER-1 technology, then TARCANTA and TARCANTA LTD. shall from such point forward, bear the responsibility for the preparation, filing, prosecution and maintenance of patents and patent applications which relate solely to the HER-1 technology. 10.3.1 CIMAB shall execute all necessary documents and otherwise provide reasonable assistance, free of charge, charge to TARCANTA and TARCANTA LTD. ., for all actions TARCANTA and TARCANTA LTD. reasonably deem necessary to undertake relating to the preparation, filing, prosecution, and maintenance of any and all patent applications and patents in the Territory that are included in the Licensed Patent Rights. 10.3.2 CIMAB shall promptly inform TARCANTA and TARCANTA LTD. as to all matters that come to its attention or to the attention of its Licensors that may affect the preparation, filing, prosecution or maintenance of the Licensed Patent Rights in the Territory or elsewhere, including, without limitation, all information with respect to the preparation, filing, prosecution and maintenance of those patent applications designated in Exhibit A as related to the "Neisseria P64K Protein" technology and to the "HER-1" technology. 10.3.3 Upon thirty (30) days written notice to CIMAB, TARCANTA and/or TARCANTA LTD. may abandon their rights under this Agreement in any country(ies) in the Territory and thereafter owe no payment under Section 10.3 or any other obligation of this Agreement in those country(ies) as of the effective date of such written notice. CIMAB shall thereafter have a right, but not an obligation, to assume the responsibility for the preparation, filing, presentation and maintenance of any and all patent applications and patents that are included in the Licensed Patent Rights in such country(ies) in the Territory where TARCANTA or TARCANTA LTD. has elected to abandon its rights. In the event that CIMAB has assumed the responsibility for the preparation, filing, presentation and maintenance of any and all patent applications and patents that are included in the Licensed Patent Rights in such country(ies) in the Territory where TARCANTA and/or TARCANTA LTD. have elected to abandon such rights, TARCANTA and TARCANTA LTD.'s rights, as the case may be, with respect to the Licensed Product in such country(ies) under this Agreement shall no longer be of any effect, and YMB's rights under the CIMAB-CIMYM Vaccine Agreement with respect to such country(ies), but only with respect to such country(ies), shall be reinstated.