Common use of Prosecution of Joint Inventions Clause in Contracts

Prosecution of Joint Inventions. (i) Decisions regarding the preparation, filing and prosecution and maintenance of Joint Patents shall be made by the JPC. Upon the identification of a Joint Invention, the JPC shall (1) promptly discuss such Joint Invention, (2) promptly discuss the desirability of filing a United States patent application covering such Joint Invention, as well as foreign counterparts, and (3) designate the Party (the “Implementing Party”) to be responsible for the preparation, filing, prosecution and maintenance of such Joint Patent Rights. The Implementing Party shall be responsible, using in-house or outside counsel reasonably selected by the JPC to implement the decisions of the JPC regarding the preparation, filing, prosecution and maintenance of such Joint Patent Rights. The Implementing Party shall provide the JPC an opportunity to review and comment upon the text of the applications relating to such Joint Patent Rights before filing. The Implementing Party shall provide the JPC with a copy of each patent application within such Joint Patent Rights as filed, together with notice of its filing dates and serial number. The Implementing Party shall keep the JPC advised of the status of all communications, actual and prospective filings or submissions regarding such Joint Patent Rights, shall provide the JPC an opportunity to review and comment on such communications, filings and submissions proposed to be sent to any patent office. The Implementing Party shall also notify the JPC of the grant of any such Joint Patent Rights. The Implementing Party shall not cease the prosecution and/or *Certain information on this page has been omitted and filed separately with the commission. Confidential treatment has been requested with respect to the omitted portions. maintenance, or modify the claims, of any such Joint Patent Rights in any country or elect not to file a patent application within such Joint Patent Rights, unless approved by the JPC (which approval shall not be unreasonably withheld).

Prosecution of Joint Inventions. (ia) Decisions regarding PDL will have the preparation, filing first right of election to file priority patent applications for Joint Inventions in any country in the Territory. If PDL declines to file such applications then Roche may do so. Such filings and all subsequent prosecution and maintenance of Joint Patents shall be made consistent with the patent strategy developed by the JPC. Upon . (b) The Party not performing the identification priority patent filings for Joint Inventions pursuant to this Section 12.6 undertakes without cost to the filing Party to obtain all necessary assignment documents for the filing Party, to render all signatures that shall be necessary for such patent filings and to assist the filing Party in all other reasonable ways that are necessary for the issuance of a Joint Invention, the JPC shall (1) promptly discuss such Joint Invention, (2) promptly discuss the desirability of filing a United States patent application covering such Joint Invention, patents involved as well as foreign counterparts, and (3) designate the Party (the “Implementing Party”) to be responsible for the preparation, filing, maintenance and prosecution and maintenance of such Joint Patent Rightspatents. The Implementing Party not performing the patent filings shall on request be responsible, using in-house or outside counsel reasonably selected authorized by the JPC other Party to implement have access to the decisions of the JPC regarding the preparation, filing, prosecution and maintenance of files concerning such Joint Patent Rights. The Implementing Party shall provide the JPC an opportunity to review and comment upon the text of the applications relating to such Joint Patent Rights before filing. The Implementing Party shall provide the JPC with a copy of each patent application within such Joint Patent Rights as filed, together with notice of its filing dates and serial number. The Implementing Party shall keep the JPC advised of the status of all communications, actual and prospective filings or submissions regarding such Joint Patent Rights, shall provide the JPC an opportunity to review and comment on such communications, filings and submissions proposed to be sent to patents in any patent officeoffices in the world. The Implementing Party shall also notify the JPC of the grant of any such Joint Patent Rights. The Implementing Party shall not cease the prosecution and/or **** Certain information on this page has been omitted and filed separately with the commission. Confidential treatment has been requested with respect to the omitted portions. (c) The Party performing the priority patent filings for Joint Inventions pursuant to this Section 12.6 undertakes to perform the corresponding convention filings from case to case, after having discussed the countries for foreign filings with the other Party. (d) The costs and expenses for prosecution and maintenance of Joint Roche-PDL Patents shall be allocated between the Parties as set forth in Section 12.7. (e) Should the Responsible Party decide that it is no longer interested in maintaining or prosecuting a Joint Roche-PDL Patent, it shall promptly advise the other Party thereof and the Parties shall discuss whether the Responsible Party shall assign such Joint Roche-PDL Patent to the other Party at no cost to the assignee. maintenance, or modify the claims, of If any such Joint patents or patent applications are assigned to Roche, they shall then be deemed to be a Sole Roche Patent Rights in any country or elect not and, to file a patent application within the extent such Joint Roche-PDL Patent Rightscontains claims outside the Collaborative Fields, unless approved by PDL and its Affiliates shall have a worldwide immunity from suit thereunder. If any such patents or patent applications are assigned to PDL, they shall then be deemed to be a Sole PDL Patent and, to the JPC (which approval extent such Joint Roche-PDL Patents contain claims outside the Collaborative Fields, Roche and its Affiliates shall not be unreasonably withheld)have a worldwide immunity from suit thereunder.