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

Prosecution and Maintenance of Patent Rights. 15.2.1. Prosecution of Voyager Patent Rights and Voyager Collaboration Patent Rights. 15.2.1.1. Subject to Section 15.2.1.3, Voyager has the sole responsibility to, at Voyager’s discretion and at Voyager’s sole cost and expense, file, prosecute, and maintain (including the defense of any interference or opposition proceedings or inter partes review), all Voyager Patent Rights and Voyager Collaboration Patent Rights; provided, however, that Genzyme shall have sole responsibility to, at Genzyme’s discretion and at Genzyme’s sole cost and expense, file, prosecute, and maintain any Patent Rights within the Voyager Patent Rights, Voyager Collaboration Patent Rights or Joint Collaboration Patent Rights that relate solely to (a) any SMA Licensed Product or the SMA Licensed Program (the “SMA Product-Specific Patent Rights”) or (b) if Genzyme has exercised the Co-Co Option, any HD Licensed Product or the HD Licensed Program (and that do not constitute CHDI Collaboration Patent Rights) (the “HD Product-Specific Patent Rights”), in accordance with Section 15.2.2. 15.2.1.2. Voyager shall furnish to Genzyme, via electronic mail or such other method as mutually agreed by the Parties, copies of documents received from outside counsel in the course of filing, prosecution or maintenance of or copies of documents filed with the relevant national patent offices with respect to the filing, prosecution, and maintenance of all Voyager Patent Rights and Voyager Collaboration Patent Rights within a reasonable time after the receipt or filing of such documents. Voyager shall provide Genzyme CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. and its patent counsel with a reasonable opportunity to consult with and provide comments to Voyager and its patent counsel regarding the filing and contents of any such application, amendment, submission or response. All timely advice and suggestions of Genzyme and its patent counsel shall be taken into consideration in good faith by Voyager and its patent counsel in connection with such filing. Voyager shall pursue in good faith all reasonable claims requested by Genzyme in the prosecution of any Voyager Collaboration Patent Rights or Voyager Patent Rights. 15.2.1.3. In the event that Voyager elects not to maintain patent protection on any Voyager Collaboration Patent Rights or Voyager Patent Rights, Voyager shall notify Genzyme at least [***] before any such Patent Rights would become abandoned or otherwise forfeited, and subject to the provisions of any applicable Voyager In-License, Voyager shall assign all of its right, title and interest in and to such Voyager Collaboration Patent Rights or Voyager Patent Rights to Genzyme at Genzyme’s sole cost and expense, and such Voyager Collaboration Patent Rights or Voyager Patent Rights shall become Genzyme Patent Rights or Genzyme Know-How, as applicable; provided that, if such assignment is not possible, then Genzyme shall have the right (but not the obligation), at its sole cost and expense, to prosecute and maintain in any country patent protection on such Voyager Collaboration Patent Rights or Voyager Patent Rights in the name of Voyager. Voyager shall use commercially reasonable efforts to make available to Genzyme its authorized attorneys, agents or representatives, or such of its employees as are reasonably necessary to assist Genzyme in maintaining and defending the patent protection described under this Section 15.2.1.

Prosecution and Maintenance of Patent Rights. 15.2.114.2.1. Prosecution of Voyager Repare Patent Rights and Voyager Collaboration Joint Patent Rights. 15.2.1.114.2.1.1. Subject to Section 15.2.1.314.2.1.3, Voyager Repare has the sole responsibility to, at VoyagerRepare’s discretion and at VoyagerRepare’s sole cost and expense, file, prosecute, and maintain (including the defense of any interference or opposition proceedings or inter partes review), all Voyager Repare Patent Rights and Voyager Collaboration Patent Rights; provided, however, that Genzyme shall have sole responsibility to, at Genzyme’s discretion and at Genzyme’s sole cost and expense, file, prosecutethroughout the world, and maintain any Joint Patent Rights within in the Voyager Patent Rights, Voyager Collaboration Patent Rights or Joint Collaboration Patent Rights that relate solely to (a) any SMA Licensed Product or the SMA Licensed Program (the “SMA Product-Specific Patent Rights”) or (b) if Genzyme has exercised the Co-Co Option, any HD Licensed Product or the HD Licensed Program (and that do not constitute CHDI Collaboration Patent Rights) (the “HD Product-Specific Patent Rights”), in accordance with Section 15.2.2Repare Territory. 15.2.1.214.2.1.2. Voyager Repare shall furnish to GenzymeOno, via electronic mail or such other method as mutually agreed by the Parties, copies of documents received from outside counsel in the course of filing, prosecution or maintenance of or copies of documents filed with with, or material communications with, the relevant national or regional patent offices with respect to the filing, prosecution, and maintenance of all Voyager Repare Patent Rights in the Ono Territory, and Voyager Collaboration Joint Patent Rights in the Repare Territory, within a reasonable time after the receipt or filing of such documents. Voyager Repare shall provide Genzyme CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. Ono and its patent counsel with a reasonable opportunity to consult with and provide comments to Voyager Repare and its patent counsel regarding the filing and contents of any such application, amendment, submission or response. All timely advice and suggestions of Genzyme Ono and its patent counsel shall be taken into consideration in good faith by Voyager Repare and its patent counsel in connection with such filing. Voyager Repare shall pursue in good faith all reasonable claims requested by Genzyme Ono in the prosecution of any Voyager Collaboration Repare Patent Rights throughout the world, or Voyager Joint Patent RightsRights in the Repare Territory. 15.2.1.314.2.1.3. In the event that Voyager Repare elects not to maintain patent protection on any Voyager Collaboration Repare Patent Rights in the Ono Territory, or Voyager Joint Patent RightsRights in the Repare Territory, Voyager Repare shall notify Genzyme Ono at least [***] before any such Patent Rights would become abandoned or otherwise forfeited, and subject to the provisions of any applicable Voyager Repare In-License, Voyager Repare shall assign all of its right, title and interest in and to such Voyager Collaboration Repare Patent Rights or Voyager Joint Patent Rights to Genzyme Ono at GenzymeOno’s sole cost and expense, and such Voyager Collaboration Repare Patent Rights or Voyager Joint Patent Rights shall become Genzyme Ono Patent Rights or Genzyme Ono Know-How, as applicable; provided that, if such assignment is not possible, then Genzyme Ono shall have the right (but not the obligation), at its sole cost and expense, to prosecute and maintain in any country in the Ono Territory or the Repare Territory, as applicable, patent protection on such Voyager Collaboration Repare Patent Rights or Voyager Joint Patent Rights Right in the name of VoyagerRepare. Voyager Repare shall use commercially reasonable efforts to make available to Genzyme Ono its authorized attorneys, agents or representatives, or such of its employees as are reasonably necessary to assist Genzyme Ono in maintaining and defending the patent protection described under this Section 15.2.114.2.

Prosecution and Maintenance of Patent Rights. 15.2.1. (a) Prosecution of Voyager Patent Rights and Voyager Collaboration Xxxxxx Memantine Patent Rights. 15.2.1.1(i) Prosecution and Maintenance. Subject to Section 15.2.1.3, Voyager has the sole responsibility to, at Voyager’s discretion and at Voyager’s sole cost and expense[*] prepare, file, prosecute, prosecute and maintain (including with respect to related interference, derivation, re-issuance, re-examination, opposition and other post-grant proceedings) the defense Adamas Memantine Patent Rights in the Territory. Adamas and Forest shall cooperate through the JIPWG in connection with the continued prosecution and maintenance [*] of any interference or opposition proceedings or inter partes reviewthe Adamas Memantine Patent Rights, and the JIPWG shall discuss and shall strive to agree upon a strategy for the prosecution and maintenance [*] of the Adamas Memantine Patent Rights. Subject to this Section 7.3(a)(i), all Voyager if consensus cannot be reached by the JIPWG with respect to any matter relating to the prosecution and maintenance of the Adamas Memantine Patent Rights in the Territory, including whether to file a patent application in the Territory, [*] shall have the final decision-making authority regarding such prosecution and Voyager Collaboration maintenance; provided that [*] shall consider in good faith [*] reasonable proposals or comments as part of such filing, prosecution and maintenance. At all times during the Term, [*] shall have the right to review and comment on the documentation, filings and communications to or from the US Patent and Trademark Office (or any successor agency) (including reasonable access thereto) related to the Adamas Memantine Patent Rights, and [*] shall keep [*] reasonably informed of the status of all pending patent applications that pertain to the Adamas Memantine Patent Rights. [*]: (1) [*] shall incorporate [*] reasonable proposals or comments as part of such filing, prosecution or maintenance, and (2) [*] shall use for the filing and prosecution of the Adamas Memantine Patent Rights patent counsel [*], which [*] patent counsel for the Adamas Memantine Patent Rights [*]; provided, however, in the event that Genzyme shall have sole responsibility to, at Genzyme’s discretion and at Genzyme’s sole cost and expense, file, prosecute, and maintain any Patent Rights within [*] reasonably believes that [*] is [*] the Voyager Adamas Memantine Patent Rights, Voyager Collaboration [*] shall have the right to elect to change patent counsel to patent counsel [*], such [*]. On and after the Effective Date, such [*] patent counsel shall [*], and [*] with respect to such filing and prosecution. If, [*], [*] decides to abandon any Xxxxxx Memantine Patent Rights, [*] shall, at its sole expense, have the option to continue to prosecute and maintain such Patent Rights, in which case such Patent Rights or Joint Collaboration shall [*], but, for clarity, shall [*]. If, [*], [*] decides to abandon any Adamas Memantine Patent Rights, [*] shall, at its sole expense, have the option to continue to prosecute and maintain such Patent Rights [*], provided that relate solely to (a1) any SMA Licensed Product or such prosecution and maintenance by [*] shall [*] with respect to the SMA Licensed Program (the “SMA Product-Specific other Adamas Memantine Patent Rights”; (2) or [*] shall (bA) if Genzyme has exercised keep [*] reasonably informed of the Co-Co Option, any HD Licensed Product or the HD Licensed Program (and status of all pending patent applications that do not constitute CHDI Collaboration pertain to such Xxxxxx Memantine Patent Rights, (B) (the “HD Product-Specific Patent Rights”), in accordance with Section 15.2.2. 15.2.1.2. Voyager shall furnish to Genzyme, via electronic mail incorporate [*] reasonable proposals or comments as part of such other method as mutually agreed by the Parties, copies of documents received from outside counsel in the course of filing, prosecution or maintenance of or copies of documents filed with the relevant national patent offices with respect to the filing, prosecutionmaintenance, and maintenance of all Voyager Patent Rights and Voyager Collaboration Patent Rights within a reasonable time after the receipt or filing of such documents. Voyager shall provide Genzyme CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED. and its patent counsel with a reasonable opportunity to consult with and provide comments to Voyager and its patent counsel regarding (C) use for the filing and contents prosecution of any such application, amendment, submission or response. All timely advice and suggestions of Genzyme and its Xxxxxx Memantine Patent Rights patent counsel [*]; and (3) for clarity, such Xxxxxx Memantine Patent Rights shall [*]. If (A) the prosecuting Party’s intended position in the prosecution or maintenance of an Xxxxxx Memantine Patent Right would be taken into consideration reasonably expected to have a material adverse effect on the non-prosecuting Party’s interest in and rights to the [*] (including the licenses granted hereunder), the [*] (in case of [*] an Adamas Memantine Patent Right), or the Commercialization of the Products in the Field in the non- [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 406 of the Securities Act of 1933, as amended. prosecuting Party’s territory and (B) the non-prosecuting Party notifies the prosecuting Party of its objection to such prosecution or maintenance position, the Parties shall meet and discuss the non-prosecuting Party’s objection in good faith by Voyager and its patent counsel in connection with such filing. Voyager shall pursue in good faith all reasonable claims requested by Genzyme in the prosecution of any Voyager Collaboration Patent Rights or Voyager Patent Rights. 15.2.1.3. In the event that Voyager elects not to maintain patent protection on any Voyager Collaboration Patent Rights or Voyager Patent Rights, Voyager shall notify Genzyme at least [***] before any such Patent Rights would become abandoned or otherwise forfeited, and subject to the provisions of any applicable Voyager In-License, Voyager shall assign all of its right, title and interest in and to such Voyager Collaboration Patent Rights or Voyager Patent Rights to Genzyme at Genzyme’s sole cost and expense, and such Voyager Collaboration Patent Rights or Voyager Patent Rights shall become Genzyme Patent Rights or Genzyme Know-How, as applicable; provided that, if such assignment is not possible, then Genzyme shall have the right (but not the obligation), at its sole cost and expense, to prosecute and maintain in any country patent protection on such Voyager Collaboration Patent Rights or Voyager Patent Rights in the name of Voyager. Voyager shall use commercially reasonable efforts to make available determine a mutually agreeable prosecution or maintenance strategy, provided that if the Parties fail to Genzyme agree and the non-prosecuting Party maintains its authorized attorneysobjection, agents or representatives, or such of its employees as are reasonably necessary to assist Genzyme in maintaining and defending the patent protection described under this Section 15.2.1[*].