Common use of Prosecution of New Patents Clause in Contracts

Prosecution of New Patents. (a) GNE shall have the first right, using in-house or outside legal counsel selected at GNE's sole discretion, to prepare, file, prosecute, maintain and obtain extensions of GNE Patents or Joint Patents in countries of GNE's choice throughout the Territory. GNE shall bear the costs relating to such activities in the Territory. GNE shall use reasonable efforts to solicit SG's advice and review of Joint Patents and material prosecution matters related thereto in reasonable time prior to filing thereof, and GNE shall consider in good faith SG's reasonable comments related thereto. (b) SG shall have the first right, using in-house or outside legal counsel selected at SG's sole discretion, to prepare, file, prosecute, maintain and obtain extensions of SG Patents and BMS Patents in countries of SG's choice throughout the Territory. SG shall use reasonable efforts to solicit GNE's advice and review of SG Patents and material prosecution matters related thereto in reasonable time prior to filing thereof, and SG shall consider in good faith GNE's reasonable comments related thereto. (c) If SG, prior or subsequent to filing SG Patents, elects not to file, prosecute or maintain such patents or certain claims encompassed by such patents, SG shall give GNE notice thereof within a reasonable period prior to allowing such patents or certain claims encompassed by such patents to lapse or become abandoned or unenforceable, and GNE shall thereafter have the right, at its sole expense to prepare, file, prosecute and maintain such patents or certain claims encompassed by such patents concerning all such inventions and discoveries in countries of its choice throughout the world. (d) If GNE, prior or subsequent to filing Joint Patents, elects not to file, prosecute or maintain such patents or certain claims encompassed by such patents, GNE shall give SG notice thereof within a reasonable period prior to allowing such patents or certain claims encompassed by such patents to lapse or become abandoned or unenforceable, and SG shall thereafter have the right, at its sole expense to prepare, file, prosecute and maintain such patents or certain claims encompassed by such patents concerning all such inventions and discoveries in countries of its choice throughout the world.

Prosecution of New Patents. (a) GNE Genentech shall have the first right, using in-house or outside legal counsel selected at GNEGenentech's sole discretion, to prepare, file, prosecute, maintain and obtain extensions of GNE Genentech Patents, Genentech NP Patents or Joint Patents filed after the Restated Effective Date in countries of GNEGenentech's choice throughout the TerritoryLicensed Territory and in such countries within the Co-Promotion Territory as agreed by the Parties with appropriate credit to IDEC representatives, including the naming of such parties as inventors where appropriate. GNE Genentech shall bear the costs relating to such activities in the TerritoryLicensed Territory at all times and in the Co-Promotion Territory until Regulatory Approval in the United States. GNE Such costs in the Co-Promotion Territory after Regulatory Approval in the United States shall be included in Other Operating Income/Expense pursuant to Exhibit A. Genentech shall disclose to IDEC the complete text of, and shall use reasonable efforts to solicit SGIDEC's advice and review of the nature and text of, all Genentech Patents, Genentech NP Patents and Joint Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and GNE Genentech shall consider in good faith SGIDEC's reasonable comments related thereto. (b) SG IDEC shall have the first right, using in-house or outside legal counsel selected at SGIDEC's sole discretion, to prepare, file, prosecute, maintain and obtain extensions of SG IDEC Patents filed after the Restated Effective Date in countries agreed to by the Parties within the Co-Promotion Territory and BMS Patents in countries of SGGenentech's choice throughout within the Licensed Territory. SG IDEC shall disclose to Genentech the complete text of, and shall use reasonable efforts to solicit GNEGenentech's advice and review of SG the nature and text of, such IDEC Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and SG IDEC shall (i) in the Co-Promotion Territory consider in good faith GNEGenentech's reasonable comments related thereto and (ii) in the Licensed Territory take into account Genentech's reasonable comments related thereto. All reasonable costs related to preparing, filing, prosecuting, maintaining and extending IDEC Patents shall be (i) prior to Regulatory Approval in the United States, paid by IDEC and (ii) after Regulatory Approval in the United States, included in Other Operating Income/Expense pursuant to Exhibit A for activities within the Co-Promotion Territory and reimbursed by Genentech to IDEC for activities within the Licensed Territory. (c) If SGGenentech, prior or subsequent to filing SG any Genentech Patents, Genentech NP Patents or Joint Patents, elects not to file, prosecute or maintain such patents Patents or certain claims encompassed by such patentsPatents, SG Genentech shall give GNE IDEC notice thereof within a reasonable period prior to allowing such patents Patents or certain claims encompassed by such patents Patents to lapse or become abandoned or unenforceable, and GNE IDEC shall thereafter have the right, at its sole expense expense, to prepare, file, prosecute and maintain such patents Patents or certain claims encompassed by such patents concerning all Patents that claim Franchise Products or formulations, methods of manufacture or methods of use thereof in countries of its choice throughout the world. If IDEC, prior or subsequent to filing IDEC Patents, elects not to file, prosecute or maintain such inventions Patents or certain claims encompassed by such Patents that claim Franchise Products or formulations, methods of manufacture or methods of use thereof, IDEC shall give Genentech notice thereof within a reasonable period prior to allowing such Patents or certain claims encompassed by such Patents to lapse or become abandoned or unenforceable, and discoveries Genentech shall thereafter have the right, at its sole expense, to prepare, file prosecute and maintain such Patents or certain claims encompassed by such Patents in countries of its choice throughout the world. (d) If GNE, prior or subsequent to The Party filing Joint Patents, elects not Patents shall do so in the name of and on behalf of both Genentech and IDEC. Each of IDEC and Genentech shall hold all information it presently knows or acquires under this Paragraph which is related to file, prosecute or maintain such patents or certain claims encompassed by such patents, GNE shall give SG notice thereof within a reasonable period prior to allowing such patents or certain claims encompassed by such patents to lapse or become abandoned or unenforceable, and SG shall thereafter have the right, at its sole expense to prepare, file, prosecute and maintain such patents or certain claims encompassed by such patents concerning all such inventions and discoveries in countries Patents as confidential subject to the provisions of its choice throughout the worldArticle 11 of this Agreement.

Prosecution of New Patents. (a) GNE Genentech shall have the first right, using in-house or outside legal counsel selected at GNE's Genentech’s sole discretion, to prepare, file, prosecute, maintain and obtain extensions of GNE Genentech Patents, Genentech NP Patents or Joint Patents filed after the Restated Effective Date in countries of GNE's Genentech’s choice throughout the TerritoryLicensed Territory and in such countries within the Co-Promotion Territory as agreed by the Parties with appropriate credit to IDEC representatives, including the naming of such parties as inventors where appropriate. GNE Genentech shall bear the costs relating to such activities in the TerritoryLicensed Territory at all times and in the Co-Promotion Territory until Regulatory Approval in the United States. GNE Such costs in the Co-Promotion Territory after Regulatory Approval in the United States shall be included in Other Operating Income/Expense pursuant to Exhibit A. Genentech shall disclose to IDEC the complete text of, and shall use reasonable efforts to solicit SG's IDEC’s advice and review of the nature and text of, all Genentech Patents, Genentech NP Patents and Joint Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and GNE Genentech shall consider in good faith SG's IDEC’s reasonable comments related thereto. (b) SG IDEC shall have the first right, using in-house or outside legal counsel selected at SG's IDEC’s sole discretion, to prepare, file, prosecute, maintain and obtain extensions of SG IDEC Patents filed after the Restated Effective Date in countries agreed to by the Parties within the Co-Promotion Territory and BMS Patents in countries of SG's Genentech’s choice throughout within the Licensed Territory. SG IDEC shall disclose to Genentech the complete text of, and shall use reasonable efforts to solicit GNE's Genentech’s advice and review of SG the nature and text of, such IDEC Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and SG IDEC shall (i) in the Co-Promotion Territory consider in good faith GNE's Genentech’s reasonable comments related thereto and (ii) in the Licensed Territory take into account Genentech’s reasonable comments related thereto. All reasonable costs related to preparing, filing, prosecuting, maintaining and extending IDEC Patents shall be (i) prior to Regulatory Approval in the United States, paid by IDEC and (ii) after Regulatory Approval in the United States, included in Other Operating Income/Expense pursuant to Exhibit A for activities within the Co-Promotion Territory and reimbursed by Genentech to IDEC for activities within the Licensed Territory. (c) If SGGenentech, prior or subsequent to filing SG any Genentech Patents, Genentech NP Patents or Joint Patents, elects not to file, prosecute or maintain such patents Patents or certain claims encompassed by such patentsPatents, SG Genentech shall give GNE IDEC notice thereof within a reasonable period prior to allowing such patents Patents or certain claims encompassed by such patents Patents to lapse or become abandoned or unenforceable, and GNE IDEC shall thereafter have the right, at its sole expense expense, to prepare, file, prosecute and maintain such patents Patents or certain claims encompassed by such patents concerning all Patents that claim Franchise Products or formulations, methods of manufacture or methods of use thereof in countries of its choice throughout the world. If IDEC, prior or subsequent to filing IDEC Patents, elects not to file, prosecute or maintain such inventions Patents or certain claims encompassed by such Patents that claim Franchise Products or formulations, methods of manufacture or methods of use thereof, IDEC shall give Genentech notice thereof within a reasonable period prior to allowing such Patents or certain claims encompassed by such Patents to lapse or become abandoned or unenforceable, and discoveries Genentech shall thereafter have the right, at its sole expense, to prepare, file prosecute and maintain such Patents or certain claims encompassed by such Patents in countries of its choice throughout the world. (d) If GNE, prior or subsequent to The Party filing Joint Patents, elects not Patents shall do so in the name of and on behalf of both Genentech and IDEC. Each of IDEC and Genentech shall hold all information it presently knows or acquires under this Paragraph which is related to file, prosecute or maintain such patents or certain claims encompassed by such patents, GNE shall give SG notice thereof within a reasonable period prior to allowing such patents or certain claims encompassed by such patents to lapse or become abandoned or unenforceable, and SG shall thereafter have the right, at its sole expense to prepare, file, prosecute and maintain such patents or certain claims encompassed by such patents concerning all such inventions and discoveries in countries Patents as confidential subject to the provisions of its choice throughout the worldArticle 11 of this Agreement.

Prosecution of New Patents. (a) GNE SCHERING shall have the first right, using in-house or outside legal counsel selected at GNESCHERING's sole discretion, to prepare, file, prosecute, maintain and obtain extensions of GNE Patents or Joint SCHERING Patents in countries of GNESCHERING's choice throughout the Territoryworld. GNE SCHERING shall bear the costs relating to such activities in the TerritoryLicensed Territory at all times and in the United States. GNE SCHERING shall use reasonable efforts to solicit SGIDEC's advice and review of Joint the nature and text of SCHERING Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and GNE SCHERING shall consider in good faith SGIDEC's reasonable comments related thereto. (b) SG IDEC shall have the first right, using in-house or outside legal counsel selected at SGIDEC's sole discretion, to prepare, file, prosecute, maintain and obtain extensions of SG IDEC Patents and BMS Joint Patents in countries of SG's choice filed after the Effective Date throughout the Territoryworld. SG IDEC shall use reasonable efforts to solicit GNESCHERING's advice and review of SG the nature and text of such IDEC Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and SG IDEC shall (i) in the United States consider in good faith GNESCHERING's reasonable comments related thereto and (ii) in the Licensed Territory take into account SCHERING's reasonable comments related thereto. All reasonable costs related to preparing, filing, prosecuting, maintaining and extending IDEC Patents and Joint Patents shall be paid by IDEC for activities within the United States and reimbursed by SCHERING to IDEC for activities within the Licensed Territory, provided that such Patents are necessary to properly commercialize the Licensed Product in the Licensed Territory. Such reimbursement shall be paid to IDEC within 30 days after receipt of an invoice therefor by SCHERING. (c) If SG, prior or subsequent to filing SG Patents, elects not to file, prosecute or maintain such patents or certain claims encompassed by such patents, SG shall give GNE notice thereof within a reasonable period prior to allowing such patents or certain claims encompassed by such patents to lapse or become abandoned or unenforceable, and GNE shall thereafter have the right, at its sole expense to prepare, file, prosecute and maintain such patents or certain claims encompassed by such patents concerning all such inventions and discoveries in countries of its choice throughout the world. (d) If GNE, prior or subsequent to filing Joint Patents, elects not to file, prosecute or maintain such patents or certain claims encompassed by such patents, GNE shall give SG notice thereof within a reasonable period prior to allowing such patents or certain claims encompassed by such patents to lapse or become abandoned or unenforceable, and SG shall thereafter have the right, at its sole expense to prepare, file, prosecute and maintain such patents or certain claims encompassed by such patents concerning all such inventions and discoveries in countries of its choice throughout the world.

Prosecution of New Patents. (a) GNE Genentech shall have the first right, using in-house or outside legal counsel selected at GNE's Genentech’s sole discretion, to prepare, file, prosecute, maintain and obtain extensions of GNE Genentech Patents, Genentech NP Patents or Joint Patents filed after the Restated Effective Date in countries of GNE's Genentech’s choice throughout the TerritoryLicensed Territory and in such countries within the Co-Promotion Territory as agreed by the Parties with appropriate credit to IDEC representatives, including the naming of such parties as inventors where appropriate. GNE Genentech shall bear the costs relating to such activities in the TerritoryLicensed Territory at all times and in the Co-Promotion Territory until Regulatory Approval in the United States. GNE Such costs in the Co-Promotion Territory after Regulatory Approval in the United States shall be included in Other Operating Income/Expense pursuant to Exhibit A. Genentech shall disclose to IDEC the complete text of, and shall use reasonable efforts to solicit SG's IDEC’s advice and review of the nature and text of, all Genentech Patents, Genentech NP Patents and Joint Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and GNE Genentech shall consider in good faith SG's IDEC’s reasonable comments related thereto. (b) SG IDEC shall have the first right, using in-house or outside legal counsel selected at SG's IDEC’s sole discretion, to prepare, file, prosecute, maintain and obtain extensions of SG IDEC Patents [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of this exhibit has been filed separately with the Commission. filed after the Restated Effective Date in countries agreed to by the Parties within the Co-Promotion Territory and BMS Patents in countries of SG's Genentech’s choice throughout within the Licensed Territory. SG IDEC shall disclose to Genentech the complete text of, and shall use reasonable efforts to solicit GNE's Genentech’s advice and review of SG the nature and text of, such IDEC Patents and material prosecution matters related thereto in reasonable reasonably sufficient time prior to filing thereof, and SG IDEC shall (i) in the Co-Promotion Territory consider in good faith GNE's Genentech’s reasonable comments related thereto and (ii) in the Licensed Territory take into account Genentech’s reasonable comments related thereto. All reasonable costs related to preparing, filing, prosecuting, maintaining and extending IDEC Patents shall be (i) prior to Regulatory Approval in the United States, paid by IDEC and (ii) after Regulatory Approval in the United States, included in Other Operating Income/Expense pursuant to Exhibit A for activities within the Co-Promotion Territory and reimbursed by Genentech to IDEC for activities within the Licensed Territory. (c) If SGGenentech, prior or subsequent to filing SG any Genentech Patents, Genentech NP Patents or Joint Patents, elects not to file, prosecute or maintain such patents Patents or certain claims encompassed by such patentsPatents, SG Genentech shall give GNE IDEC notice thereof within a reasonable period prior to allowing such patents Patents or certain claims encompassed by such patents Patents to lapse or become abandoned or unenforceable, and GNE IDEC shall thereafter have the right, at its sole expense expense, to prepare, file, prosecute and maintain such patents Patents or certain claims encompassed by such patents concerning all Patents that claim Franchise Products or formulations, methods of manufacture or methods of use thereof in countries of its choice throughout the world. If IDEC, prior or subsequent to filing IDEC Patents, elects not to file, prosecute or maintain such inventions Patents or certain claims encompassed by such Patents that claim Franchise Products or OCR, or formulations, methods of manufacture or methods of use thereof, IDEC shall give Genentech notice thereof within a reasonable period prior to allowing such Patents or certain claims encompassed by such Patents to lapse or become abandoned or unenforceable, and discoveries Genentech shall thereafter have the right, at its sole expense, to prepare, file prosecute and maintain such Patents or certain claims encompassed by such Patents in countries of its choice throughout the world. (d) If GNE, prior or subsequent to The Party filing Joint Patents, elects not Patents shall do so in the name of and on behalf of both Genentech and IDEC. Each of IDEC and Genentech shall hold all information it presently knows or acquires under this Paragraph which is related to file, prosecute or maintain such patents or certain claims encompassed by such patents, GNE shall give SG notice thereof within a reasonable period prior to allowing such patents or certain claims encompassed by such patents to lapse or become abandoned or unenforceable, and SG shall thereafter have the right, at its sole expense to prepare, file, prosecute and maintain such patents or certain claims encompassed by such patents concerning all such inventions and discoveries in countries Patents as confidential subject to the provisions of its choice throughout the worldArticle 11 of this Agreement.