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

Prosecution and Maintenance of Patent Rights. 6.2.1 Within sixty (60) days after the Effective Date, the Parties shall discuss and determine a reasonable strategy with respect to the Patent Prosecution of the Joint Patent Rights and the Infinity Patent Rights, which strategy may be modified upon agreement of the Parties. Except as otherwise agreed by the Parties, Infinity agrees to conduct Patent Prosecution with respect to the Infinity Patent Rights in each country/region recommended by Novartis. 6.2.2 The initial right and responsibility for (a) preparing, filing and prosecuting patent applications (including, but not limited to, provisional, reissue, continuation, continuation-in-part, divisional, and substitute applications and any foreign counterparts thereof); (b) maintaining any Patent Rights; and (c) managing any interference or opposition or similar proceedings relating to the foregoing ((a) through (c), “Patent Prosecution”) shall (A) with respect to Patent Rights covering inventions for which the employees, Affiliates, independent contractors, consultants or agents of both Parties are inventors (“Joint Patent Rights”), rest with Novartis; and (B) otherwise rest with the Controlling Party. All Patent Prosecution expenses, including attorneys’ fees, incurred by a Party in the performance of Patent Prosecution shall be borne (i) with respect to Joint Patent Rights, equally by both Parties, and (ii) otherwise by the Controlling Party; provided, however, that, once any compound is included on the Active Compound List, Novartis shall bear all Patent Prosecution expenses, including attorneys’ fees, incurred by Infinity in the performance of Patent Prosecution with respect to any Infinity Patent Rights covering such compound. 6.2.3 In conducting Patent Prosecution with respect to the Joint Patent Rights and the Infinity Patent Rights in accordance with Section 6.2.2, the Party conducting such Patent Prosecution shall (a) conduct such Patent Prosecution in material conformance with the strategy mutually agreed by the Parties pursuant to Section 6.2.1, (b) keep the other Party reasonably apprised of the status of all relevant patent applications, (c) provide such other Party with reasonable access to all related documentation, filings and communications to or from the respective patent offices, and (d) provide such other Party the reasonable opportunity to make comments and recommendations with respect to such Patent Prosecution (which the prosecuting Party shall reasonably consider). 6.2.4 Notwithstanding Section 6.2.2, (a) Novartis shall provide Infinity with prompt written notice as to any intention to abandon any Joint Patent Rights, and will first offer Infinity the opportunity to assume responsibility for the same at Infinity’s cost before abandoning such Patent Rights and shall make assignment of such Patent Rights to Infinity and the provisions of Sections 6.2.5(a)(ii) and (iii) shall apply, mutatis mutandis; and (

Prosecution and Maintenance of Patent Rights. 6.2.1 Within sixty 5.5.1 Affimed shall have the sole right (60but not the obligation) days to prepare, file, prosecute and defend any Patent Rights covering its Background IP and/or any Affimed Improvement. 5.5.2 Artiva shall have the sole right (but not the obligation) to prepare, file, prosecute and defend any Patent Rights covering its Background IP and/or any Artiva Improvement. 5.5.3 The Steering Committee shall designate one Party (the Lead IP Party) that is responsible for and shall control the preparation, filing, prosecution, grant, maintenance and defense of all Patent Rights relating to any Joint IP (Joint Patent Rights) subject to the following requirements: (i) Prior to filing any application for any Joint Patent Right, the Lead IP Party shall provide the other Party with the draft application as well as any material information in connection with such draft application (including copies of material correspondence from any external patent attorneys and agents pertaining thereto). (ii) The other Party shall review the draft application and discuss any concerns in relation to the draft application with the Lead IP Party. The Lead IP Party shall only be entitled to file any application for any Joint Patent Right after the Effective Daterelevant application has been approved in writing by the other Party (such approval not to be unreasonably withheld or delayed). Any such filing shall be made in both Parties’ name, unless otherwise agreed between the Parties. (iii) Following any filing of any application for any such Joint Patent Right, the Lead IP Party shall keep the other Party informed of all material developments in relation to such Joint Patent Right, including any potential material correspondence from patent/intellectual property offices or any opposition or other claims of any Third Party with respect of such Joint Patent Right. Any material submission by the Lead IP Party to any patent/intellectual property offices in relation to such Joint Patent Right shall require the other Party’s prior written consent (which shall not be unreasonably withheld or delayed). (iv) The Parties shall seek to act timely in their review and approval of any matter under this Section 5.5.3 in order to allow the Lead IP Party to comply with relevant filing deadlines or similar time limitations. (v) Subject to subsection (vi) below, the Parties shall discuss [***] associated with the filing and determine maintenance of any application for a Joint Patent Right. (vi) If a Party wishes to discontinue the prosecution and maintenance [***] of a Joint Patent Right (in one or more countries), it shall provide reasonable strategy with respect prior written notice thereof to the Patent Prosecution of the Joint Patent Rights and the Infinity Patent Rightsother Party (which notice shall, which strategy may be modified upon agreement of the Parties. Except as otherwise agreed by the Parties, Infinity agrees to conduct Patent Prosecution with respect to the Infinity Patent Rights in each country/region recommended by Novartis. 6.2.2 The initial right and responsibility for (a) preparingextent possible, filing and prosecuting patent applications (including, but not limited to, provisional, reissue, continuation, continuation-in-part, divisional, and substitute applications and any foreign counterparts thereof); (b) maintaining any Patent Rights; and (c) managing any interference or opposition or similar proceedings relating be given no later than [***] prior to the foregoing ((a) through (c), “Patent Prosecution”) shall (A) with respect to Patent Rights covering inventions next deadline for which the employees, Affiliates, independent contractors, consultants or agents of both Parties are inventors (“Joint Patent Rights”), rest with Novartis; and (B) otherwise rest with the Controlling Party. All Patent Prosecution expenses, including attorneys’ fees, incurred by a Party in the performance of Patent Prosecution shall any action that must be borne (i) with respect to Joint Patent Rights, equally by both Parties, and (ii) otherwise by the Controlling Party; provided, however, that, once any compound is included on the Active Compound List, Novartis shall bear all Patent Prosecution expenses, including attorneys’ fees, incurred by Infinity in the performance of Patent Prosecution taken with respect to any Infinity Patent Rights covering such compound. 6.2.3 In conducting Patent Prosecution with respect to the Joint Patent Rights and Right in the Infinity Patent Rights in accordance with Section 6.2.2relevant patent office). In such event, at the Party conducting such Patent Prosecution shall (a) conduct such Patent Prosecution in material conformance with the strategy mutually agreed by the Parties pursuant to Section 6.2.1other Party’s election, (b) keep the other Party reasonably apprised of may continue such prosecution and maintenance at its sole discretion and cost in such country(ies). In such event, the status of all relevant patent applications, (c) provide such other Party with reasonable access to all related documentation, filings and communications to or from the respective patent offices, and (d) provide such other Party the reasonable opportunity to make comments and recommendations with respect to such Patent Prosecution (which the prosecuting discontinuing Party shall reasonably consider). 6.2.4 Notwithstanding Section 6.2.2, (a) Novartis shall provide Infinity with prompt written notice as to any intention to abandon any Joint Patent Rights, execute in a timely manner and will first offer Infinity at the opportunity to assume responsibility for the same at Infinitycontinuing Party’s cost before abandoning such Patent Rights and shall make reasonable expense an assignment of such Joint Patent Rights Right to Infinity the continuing Party (in such country or all countries, as applicable) and any additional documents as may be necessary to allow the continuing Party to prosecute and maintain such Joint Patent Right. Any Joint Patent Right so assigned shall thereafter be owned solely by the continuing Party, shall no longer be considered jointly owned, and the provisions of Sections 6.2.5(a)(ii) and (iii) discontinuing Party shall applyhave a perpetual, mutatis mutandis; and (non-exclusive, royalty-free, non-transferable, non-sub-licensable license to practice under such Joint Patent Right in the applicable country or countries. [***]

Prosecution and Maintenance of Patent Rights. 6.2.1 Within sixty (60) days after the Effective Date, the Parties shall discuss and determine a reasonable strategy with respect to the Patent Prosecution of the Joint Patent Rights and the Infinity Patent Rights, which strategy may be modified upon agreement of the Parties. Except as otherwise agreed by the Parties, Infinity agrees to conduct Patent Prosecution with respect to the Infinity Patent Rights in each country/region recommended by Novartis. 6.2.2 9.2.1 The initial right and responsibility for (a) preparing, filing and prosecuting patent applications (including, but not limited to, provisional, reissue, continuing, continuation, continuation-in-part, divisional, and substitute applications and any foreign counterparts thereof); (b) maintaining any Patent Rights; and (c) managing any interference or opposition or similar proceedings relating to the foregoing ((a) through (c), “Patent Prosecution”) shall (A) Covering a Program Invention or any Tularik Background Technology that relates to [**], provided, however, that with respect to any such invention that is jointly owned by the Parties, such responsibility shall be assigned by the Joint Research Committee on a case-by-case basis. In determining which Party shall be responsible for Patent Rights covering inventions Prosecution of a jointly owned patent application, the Joint Research Committee shall consider, among other factors, the relative contribution of each Party to the claimed subject matter and the relatedness of the claimed subject matter to that in other patent applications being prosecuted by each Party. 9.2.2 All Patent Prosecution expenses, including attorneys’ fees, incurred by a Party in the performance of Patent Prosecution for which the employees, Affiliates, independent contractors, consultants or agents of both Parties are inventors (“Joint Patent Rights”), rest with Novartis; and (B) otherwise rest with the Controlling Partysolely owned Program Inventions shall be borne by [**]. All Patent Prosecution expenses, including attorneys’ fees, incurred by a Party in the performance of Patent Prosecution for jointly owned Program Inventions shall be borne (i) with respect paid by [**]. 9.2.3 If the prosecuting Party elects not to Joint Patent Rights, equally by both Parties, and (ii) otherwise by the Controlling Party; provided, however, that, once any compound is included on the Active Compound List, Novartis shall bear all continue pursuing Patent Prosecution expenses, including attorneys’ fees, incurred by Infinity in the performance of Patent Prosecution with respect to any Infinity Patent Rights covering such compound. 6.2.3 In conducting Patent Prosecution with respect to the Joint Patent Rights for Program Inventions (and the Infinity Patent Rights in accordance with Section 6.2.2, the Party conducting such Patent Prosecution shall (a) conduct such Patent Prosecution in material conformance with the strategy mutually agreed by the Parties pursuant to Section 6.2.1, (b) keep the other Party reasonably apprised of the status of all relevant patent applications, (c) provide such other Party with reasonable access to all related documentation, filings and communications to or from the respective patent offices, and (d) provide such other Party the reasonable opportunity to make comments and recommendations with respect to has a license under such Patent Prosecution (which Rights pursuant to this Agreement), then the prosecuting Party shall reasonably consider). 6.2.4 Notwithstanding Section 6.2.2, notify the other Party in writing of such election at least thirty (a30) Novartis shall provide Infinity with prompt written notice as days prior to any intention the last available date for action to abandon any Joint preserve such Patent Rights. If such other Party elects to continue Patent Prosecution, and will first offer Infinity the opportunity to assume responsibility for the same at Infinity’s cost before abandoning such Patent Rights and shall make assignment of such Patent Rights to Infinity and the provisions of Sections 6.2.5(a)(ii) and (iii) shall apply, mutatis mutandis; and (other Party [**].

Prosecution and Maintenance of Patent Rights. 6.2.1 Within sixty (60) days after the Effective Date, the Parties 10.4.1 Aventis shall discuss and determine a reasonable strategy with respect to the Patent Prosecution of the Joint Patent Rights and the Infinity Patent Rights, which strategy may be modified upon agreement of the Parties. Except as otherwise agreed by the Parties, Infinity agrees to conduct Patent Prosecution with respect to the Infinity Patent Rights in each country/region recommended by Novartis. 6.2.2 The initial right and responsibility responsible for (a) preparing, filing and prosecuting patent applications (including, but not limited to, provisional, including reissue, continuation, continuation-in-partcontinuing, divisional, and substitute applications and any foreign counterparts thereof); , (b) for maintaining any Patent Rights; , and (c) for managing any interference or opposition or similar proceedings relating to the foregoing ((a) through (c), “Patent Prosecution”) Covering any Aventis Intellectual Property or Program Intellectual Property. ImmunoGen shall (A) with respect to be responsible for Patent Rights covering inventions Prosecution for which the employees, Affiliates, independent contractors, consultants or agents of both Parties are inventors (“Joint Patent Rights”), rest with Novartis; and (B) otherwise rest with the Controlling PartyImmunoGen Intellectual Property. All Patent Prosecution expenses, including attorneys’ fees, incurred by a Party in the performance of Patent Prosecution shall be borne (i) by such Party. 10.4.2 Except with respect to Joint Patent RightsAventis Intellectual Property, equally by both Partieswith respect to which ImmunoGen shall not have rights under this Section, and (ii) otherwise by if the Controlling Party; provided, however, that, once any compound is included on the Active Compound List, Novartis shall bear all Patent Prosecution expenses, including attorneys’ fees, incurred by Infinity in the performance of prosecuting Party elects not to continue pursuing Patent Prosecution with respect to any Infinity rights within Patent Rights covering (and the other Party has rights under such compound. 6.2.3 In conducting Patent Right), then the prosecuting Party shall notify the other Party in writing of such election at least [***]([***]) [***]prior to the last available date for action to preserve such Patent Rights. If such other Party elects to continue Patent Prosecution, such other Party may do so at its sole expense. If ImmunoGen is the Party that elects not to continue pursuing Patent Prosecution and Aventis elects to continue such Patent Prosecution, then (a) such affected Patent Rights shall not be considered a Valid Claim hereunder and no Royalties shall be payable by Aventis to ImmunoGen hereunder with respect to the Joint Patent Rights and the Infinity affected Patent Rights in accordance with Section 6.2.2, such country and (b) Aventis shall be entitled to offset the Party conducting costs of such Patent Prosecution shall (a) conduct against Royalties, if any, due to ImmunoGen hereunder for sales of Products in such country. For clarity, in the event that Aventis incurs such costs of Patent Prosecution and there are not sufficient Royalties to fully offset such costs in material conformance with the strategy mutually agreed by the Parties pursuant to Section 6.2.1[***]in which such costs are incurred, (b) keep the other Party reasonably apprised of the status of all relevant patent applications, (c) provide such other Party with reasonable access to all related documentation, filings and communications to or from the respective patent offices, and (d) provide such other Party the reasonable opportunity ImmunoGen shall have no obligation to make comments and recommendations with respect a payment to Aventis for such Patent Prosecution (which the prosecuting Party shall reasonably consider)costs; provided that, Aventis may continue such offsets in subsequent [***]until such costs are fully recovered. 6.2.4 Notwithstanding Section 6.2.2, (a) Novartis shall provide Infinity with prompt written notice as to any intention to abandon any Joint Patent Rights, and will first offer Infinity the opportunity to assume responsibility for the same at Infinity’s cost before abandoning such Patent Rights and shall make assignment of such Patent Rights to Infinity and the provisions of Sections 6.2.5(a)(ii) and (iii) shall apply, mutatis mutandis; and (