Common use of Prosecution and Maintenance Clause in Contracts

Prosecution and Maintenance. (a) Each Party shall control the Prosecution of its Cross-Licensed Patents. Each Party shall: (i) keep the other Party reasonably informed regarding its activities with respect to the Prosecution of its Cross-Licensed Patents, including by providing to the other Party for its review copies of draft applications of such Patents and substantive responses and other correspondence between patent offices and such Party pertaining to such Patents reasonably in advance of the deadline for filing; (ii) provide the other Party an opportunity to timely comment on such draft applications, responses and other correspondence pertaining to such Patents; and (iii) consider in good faith any reasonable comments thereon timely provided to such Party, provided that such Party shall implement the other Party’s timely comments regarding claims of such Patents directed to the other Party’s respective field [***]. (b) Intellia will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Caribou in connection with Prosecution activities relating to the Caribou Patents [***]. Caribou will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Intellia in connection with Prosecution activities relating to the Intellia Patents [***]. (c) [***] (d) Either Party may at any time send a written notice to the other identifying any Patent within the Caribou Patents or the Intellia Patents, as applicable, that such Party no longer wishes to be kept informed and provide comments with respect to the Prosecution thereof pursuant to Section 4.1(a), and, in such case and from the date of such notice such Party’s payment obligation of any Patent Costs incurred in connection with Prosecution activities relating to such Patent pursuant to Section 4.1(b) shall cease and the other Party’s obligations under Section 4.1(a) with respect to such Patent shall terminate.

Prosecution and Maintenance. (a) Each Party shall control the Prosecution of its Cross-Licensed Patents. Each Party shall: (i) keep the other Party reasonably informed regarding its activities with respect to the Prosecution of its Cross-Licensed Patents, including by providing to the other Party for its review copies of draft applications of such Patents and substantive responses and other correspondence between patent offices and such Party pertaining to such Patents reasonably in advance of the deadline for filing; (ii) provide the other Party an opportunity to timely comment on such draft applications, responses and other correspondence pertaining to such Patents; and (iii) consider in good faith any reasonable comments thereon timely provided to such Party, provided that such Party shall implement the other Party’s timely comments regarding claims of such Patents directed to the other Party’s respective field [***]. (b) Intellia will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Caribou in connection with Prosecution activities relating to the Caribou Patents [***]. Caribou will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Intellia in connection with Prosecution activities relating to the Intellia Patents [***]. (c) [***] (d) Either Party may at any time send a written notice to the other identifying any Patent within the Caribou Patents or the Intellia Patents, as applicable, that such Party no longer wishes to be kept informed and provide comments with respect to the Prosecution thereof pursuant to Section 4.1(a), and, in such case and from the date of such notice such Party’s payment obligation of any Patent Costs incurred in connection with Prosecution activities relating to such Patent pursuant to Section 4.1(b) shall cease and the other Party’s obligations under Section 4.1(a) with respect to such Patent shall terminate. 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 PURSUANT TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.

Prosecution and Maintenance. (a) Each Party shall control The Parties will cooperate to prepare and prosecute patent applications for Early Lead Patents with the Prosecution goal of its Cross-Licensed obtaining a broad scope of protection for the relevant subject matter. Serono will use commercially reasonable efforts to obtain a broad scope of protection for Early Lead Compounds without compromising Serono's or SGX's interests in the Collaboration and will consider in good faith all comments provided by SGX with respect to the filing, prosecution and maintenance of Early Lead Patents. Each In the event that Serono elects not to file a patent application for an Early Lead Patent in the United States within [...***...] ([...***...]) [...***...] of the date the underlying invention is reduced to practice, SGX shall have the right to file, prosecute and maintain such patent application in any country. SGX shall promptly notify Serono of the conception or reduction to practice of any invention during and in the performance of the Collaboration. Furthermore, in the event that Serono elects not to file any patent applications for an Early Lead Patent in Japan or any country in Europe or to prosecute or maintain any Patents that are Early Lead Patents in the United States, Japan or any country in Europe, Serono shall give SGX not less than [...***...] ([...***...]) [...***...] notice before any relevant deadline, and SGX shall have the right to pursue, at its sole discretion and expense, filing, prosecution and maintenance of such Patents in such country. The Party shall: responsible for prosecution and maintenance of Patents under this Section 5.2(b) (i) the "Responsible Party"), shall keep the other Party reasonably (the "Non-Responsible Party") informed regarding its activities with respect as to the Prosecution status of its Cross-Licensed Patentssuch patent matters, including by providing the Non-Responsible Party the opportunity, at the Non-Responsible Party's expense, to review documents with respect to Early Lead Patents to be filed in any patent office at least thirty (30) days before filing and to comment thereon, and the other Responsible Party for its review copies of draft applications of such Patents and substantive responses and other correspondence between patent offices and such Party pertaining to such Patents reasonably in advance of the deadline for filing; (ii) provide the other Party an opportunity to timely comment on such draft applications, responses and other correspondence pertaining to such Patents; and (iii) shall consider in good faith any reasonable comments thereon timely provided to such comments. At the Responsible Party's request and expense, provided that such the Non-Responsible Party shall implement will reasonably cooperate and assist the other Party’s timely comments regarding claims Responsible Party in the preparation, filing and prosecution of such Patents directed to patent applications claiming Collaboration Technology and in the other Party’s respective field [***]. (b) Intellia will be responsible event of an interference, reissue, reexamination, opposition or request for thirty percent (30%) of the Patent Costs incurred and paid by Caribou in connection with Prosecution activities relating to the Caribou Patents [***]. Caribou will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Intellia in connection with Prosecution activities relating to the Intellia Patents [***]. (c) [***] (d) Either Party may at any time send a written notice to the other identifying any Patent within the Caribou Patents or the Intellia Patents, as applicable, that such Party no longer wishes to be kept informed and provide comments with respect to the Prosecution thereof pursuant to Section 4.1(a), and, in such case and from the date of such notice such Party’s payment obligation of any Patent Costs incurred in connection with Prosecution activities relating to such Patent pursuant to Section 4.1(b) shall cease and the other Party’s obligations under Section 4.1(a) patent term extension with respect to such Patent shall terminatepatent applications or patents issuing therefrom, including by making such Party's employees or agents available to the Responsible Party and signing or causing to have signed all documents relating to such Patents. At each Party's expense, patent counsel or any other representative designated by each Party will meet (in person, by telephone or videoconference) upon request by either Party, unless otherwise agreed in writing, during the Term of the Collaboration, and the pendency of any Early Lead Patents, to coordinate, discuss, review and implement patent filing and prosecution strategy.

Prosecution and Maintenance. (a) As between the Parties, Avenue shall use Commercially Reasonable Efforts to handle all Prosecution and Maintenance of the Licensed Patents, at its sole cost and expense and through counsel of its choice, provided that, with respect to all validity, enforceability and other material prosecution matters (including decisions related to nullity, reissue, opposition and re-examination proceedings), Avenue shall provide Licensor with a reasonable opportunity to review and comment on material communications from any patent authority regarding the Licensed Patents and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Avenue shall consider Licensor’s comments regarding such communications and drafts in good faith. If, as between the Parties, Avenue decides not to Prosecute and Maintain a Licensed Patent in a country in the Territory, Avenue shall provide reasonable prior written notice to Licensor of such intention explicitly and clearly at least sixty (60) days prior to the date upon which such Patent will lapse or become abandoned and, Licensor shall thereupon have the right, in its sole discretion, to assume the Prosecution and Maintenance of such Licensed Patent at its sole cost and expense in such country. (b) Each Party shall control assist the other Party at the reasonable request of the other Party from time to time in connection with its Prosecution of its Cross-and Maintenance activities set forth in Section 7.3(a). The Party that has the right to Prosecute and Maintain a Licensed Patents. Each Party Patent (the “Prosecuting Party”) shall: (i) keep the other Party reasonably (the “Non-Prosecuting Party”) informed regarding its activities with respect of all steps to be taken in the Prosecution preparation and prosecution of its Cross-Licensed Patents, including all applications filed by providing it pursuant to the other Party for its review copies of draft applications of such Patents and substantive responses and other correspondence between patent offices and such Party pertaining to such Patents reasonably in advance of the deadline for filingSection 7.3(a); (ii) provide furnish the other Non-Prosecuting Party an opportunity to timely comment on with copies of such draft applicationsapplications for Patents, responses amendments thereto and other related correspondence pertaining to such Patentsand from patent offices, including correspondence relating to any office actions; and (iii) to the extent reasonably practicable, permit the Non-Prosecuting Party an opportunity to offer its comments on such applications, amendments and other correspondence before making a submission to a patent office, which comments the Prosecuting Party shall consider in good faith any reasonable comments thereon timely provided to such Party, provided that such faith. The Non-Prosecuting Party shall implement the other Party’s timely comments regarding claims of such Patents directed to the other Party’s respective field [***]. (b) Intellia will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Caribou in connection with Prosecution activities relating to the Caribou Patents [***]. Caribou will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Intellia in connection with Prosecution activities relating to the Intellia Patents [***]offer its comments, if any, promptly. (c) [***] (d) Either Party may at Except as otherwise provided in this Section 7.3(c), Avenue shall have the primary right and responsibility to prepare, file, prosecute and maintain Joint Patents on a worldwide basis, and such costs shall be shared equally between the Parties. The Parties shall confer and mutually agree to a filing strategy, including the jurisdictions in which to Prosecute and Maintain a patent application, and Avenue shall provide Licensor a reasonable opportunity to review and comment on material communications from any time send patent authority regarding the Joint Patents and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Avenue shall consider Licensor’s comments regarding such communications and drafts in good faith. In the event that Avenue elects not to continue the Prosecution and Maintenance of a Joint Patent in any country, then Avenue shall provide Licensor with written notice of such determination at least sixty (60) calendar days prior to the other identifying any date upon which such Joint Patent within will lapse or become abandoned and, Licensor shall thereupon have the Caribou Patents or the Intellia Patentsright, as applicablein its sole discretion, that such Party no longer wishes to be kept informed and provide comments with respect to assume the Prosecution thereof pursuant to Section 4.1(a), and, and Maintenance of such Joint Patent at its sole cost and expense in such case and from the date of such notice such Party’s payment obligation of any Patent Costs incurred in connection with Prosecution activities relating to such Patent pursuant to Section 4.1(b) shall cease and the other Party’s obligations under Section 4.1(a) with respect to such Patent shall terminatecountry.

Prosecution and Maintenance. (aGenentech agrees to use reasonable diligence to prosecute and maintain Project Patents specifically related to a Lexicon Licensed Product or a Genentech Licensed Product and Genentech Gene Patents specifically related to a Lexicon Licensed Product it filed and to prosecute any interference proceedings with respect thereto, unless it provides Lexicon notice under Section 9.3(c) Each Party shall control or 9.3(e). Lexicon agrees to use reasonable diligence to prosecute and maintain Patents within the Prosecution of its Cross-Licensed PatentsProject Patents for which Lexicon has responsibility under Section 9.3(a) it filed and to prosecute any interference proceedings with respect thereto, unless it provides Genentech notice under Section 9.3(c) or 9.3(e). Each Party shall: (i) keep Upon the other Party's request, the Party reasonably informed regarding its activities with respect to the Prosecution of its Cross-Licensed Patents, including by providing to the other Party responsible for its review copies of draft applications of prosecuting and maintaining any such Patents and substantive responses and other correspondence between patent offices and such Party pertaining to such Patents reasonably in advance of the deadline for filing; (ii) Patent shall provide the other Party an opportunity to timely comment on such draft applications, responses and other correspondence pertaining to such Patents; and with (iiii) consider in good faith a copy of communications with any reasonable comments thereon timely provided to such Party, provided that such Party shall implement the other Party’s timely comments regarding claims of such Patents directed to the other Party’s respective field [***]. (b) Intellia will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Caribou in connection with Prosecution activities relating to the Caribou Patents [***]. Caribou will be responsible for thirty percent (30%) of the Patent Costs incurred and paid by Intellia in connection with Prosecution activities relating to the Intellia Patents [***]. (c) [***] (d) Either Party may at any time send a written notice to the other identifying any Patent within the Caribou Patents or the Intellia Patents, as applicable, that such Party no longer wishes to be kept informed and provide comments with respect to the Prosecution thereof pursuant to Section 4.1(a), and, in such case and from the date of such notice such Party’s payment obligation of any Patent Costs incurred in connection with Prosecution activities relating to such Patent pursuant to Section 4.1(b) shall cease and the other Party’s obligations under Section 4.1(a) patent office with respect to such Patent and (ii) the opportunity to review and comment on any or all such communications. The other Party shall terminateprovide its comments on any such communication within [**] after receipt of such communication, and should no comments be received by the Party responsible for prosecuting and maintaining any such Patent on or before the thirty-first day, then it shall be deemed that such other Party has no comment to make on such communication. The Party responsible for prosecuting and maintaining any such Patent shall reasonably consider comments and suggestions provided in a timely manner by the other Party. Such other Party shall maintain any such communications in confidence. All such communications provided to such other Party pursuant to this Section 9.3 shall be sent to a person to be designated by such other Party by written notice to the Party responsible for prosecuting and maintaining any such Patent.