Common use of Prosecution of Licensed Patent Rights Clause in Contracts

Prosecution of Licensed Patent Rights. 5.1.1 In accordance with this Section 5.1.1, unless the Parties otherwise agree in writing for a given Licensed Patent Right, BioMarin will have lead responsibility for the preparation, filing, prosecution, defense and maintenance (“Prosecution”) in the Territory of the Licensed Patent Rights. BioMarin shall be responsible for all costs and expenses with respect to such activities, except to the extent that any such activities are undertaken after the Effective Date at the express request of AVROBIO and in cooperation with AVROBIO as further provided in Section 5.1.2 below. BioMarin will perform such activities either itself or through patent counsel of its choice. BioMarin will provide AVROBIO with copies of all official correspondence received from patent offices with respect to any claims of Licensed Patent Rights submitted pursuant to Section 5.1.2, and with any proposed substantive responses thereto sufficiently in advance for AVROBIO to provide comments and suggestions on such proposed responses, which comments and suggestions shall be considered by BioMarin in good faith. At AVROBIO’s request, BioMarin will provide AVROBIO with an update of the filing, prosecution and maintenance status for each Licensed Patent Right; provided that BioMarin shall not be obligated to provide such updates more than [***] times per year. In the event that BioMarin elects not to pursue or continue the Prosecution of any Licensed Patent Right in any country, BioMarin shall provide AVROBIO with notice of this decision at least [***] prior to any pending lapse or abandonment thereof and provide AVROBIO with an opportunity to assume responsibility for such Prosecution, at AVROBIO’s sole expense. In the event that AVROBIO elects in writing to assume responsibility for such Prosecution, AVROBIO shall have the right, at AVROBIO’s sole expense, to transfer the responsibility for such Prosecution of such patent applications and patents to patent counsel selected by it, and BioMarin shall cooperate with AVROBIO as reasonably requested to facilitate transfer of the control of such Prosecution to AVROBIO. For clarity, all filings with respect to Licensed Patent Rights shall at all times continue to be pursued in the name of BioMarin or its designee.