Common use of Prosecution of Patents Clause in Contracts

Prosecution of Patents. (a) Licensed [***] Patents, Licensed Product Improvement Patents, and Joint Patents relating to Licensed Products. Except as otherwise provided in this Section 12.3(a), as between the Parties, Takeda shall have the sole right and authority to prepare, file, prosecute and maintain the Licensed [***] Patent, Licensed Product Improvement Patents, and, where relating to Licensed Products, Joint Patents (collectively, the “[***] Patent Prosecution”) on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions).Takeda shall bear all costs of preparation, filing, prosecution and maintenance of the [***] Patent Prosecution in the Territory. Provided that Ultragenyx’s rights with respect to the applicable Licensed Product have not terminated, Takeda, upon Ultragenyx’s request, shall provide Ultragenyx a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding the [***] Patent Prosecution and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Takeda shall consider Ultragenyx’s comments regarding such communications and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory in the Ultragenyx Field. If Ultragenyx’s rights with respect to the applicable Licensed Product have not terminated and Takeda determines in its sole discretion to abandon or not maintain any Licensed [***] Patent, Licensed Product Improvement Patent, or, where relating to Licensed Products, Joint Patent that is being prosecuted or maintained by Takeda in the Territory and that is applicable to the in the Ultragenyx Field, then Takeda shall provide Ultragenyx with written notice of such determination within a period of time reasonably necessary to allow Ultragenyx to determine, in its sole discretion, its interest in such Patent(s) (which notice by Takeda shall be given no later than sixty (60) days prior to the final deadline for any pending action or response that may be due with respect to such Patent(s) with the applicable patent authority). If Ultragenyx provides timely written notice expressing its interest in continuing to support such Patent(s), Ultragenyx shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Takeda shall provide to Ultragenyx, subject to reimbursement of Takeda’s out-of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Ultragenyx to take such action to establish or preserve any such Patents. If Ultragenyx pursues the filing or support of such Patents and Takeda continues to pursue a Licensed [***] Product in the Takeda Field, it shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding such Patents and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Ultragenyx shall consider Takeda’s comments regarding such communications and drafts in good faith.

Prosecution of Patents. (a) Licensed [***] Patents, Licensed Product Improvement Patents, and Joint Patents relating to Licensed Products. Except as otherwise provided in this Section 12.3(a11.4(a), as between the Parties, Takeda AIT Therapeutics shall have the sole right and authority first right, but not the obligation, to prepare, file, prosecute and maintain the Licensed [***] PatentAIT Therapeutics Patents and Improvement Patents at AIT Therapeutics’ own costs and expenses using counsel of its choosing. In the event AIT Therapeutics files any applications for any Improvement Patent respecting or claiming any Improvement, Licensed Product such filings shall include, but not be limited to, corresponding applications for Improvement PatentsPatents in the Territories; provided, andhowever, where relating to Licensed Products, Joint Patents (collectively, that the “[***] Patent Prosecution”) on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions).Takeda shall bear all costs of preparationassociated with preparing, filing, prosecution prosecuting and maintenance of the [***] Patent Prosecution maintaining any applications for any Improvement Patents in the Territory. Provided that Ultragenyx’s rights with respect China, or any Improvement Patents issuing in China, shall be borne by Circassia, subject to the applicable Licensed Product have not terminated, Takeda, upon Ultragenyx’s request, shall provide Ultragenyx a reasonable opportunity to review remaining terms and comment on material communications from any patent authority in the Territory regarding the [***] Patent Prosecution and drafts conditions of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Takeda shall consider Ultragenyx’s comments regarding such communications and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory in the Ultragenyx Fieldthis Section 11.4(a). If Ultragenyx’s rights with respect to the applicable Licensed Product have not terminated and Takeda AIT Therapeutics determines in its sole discretion to abandon all claims in any AIT Therapeutics Patent or not maintain any Licensed [***] Patent, Licensed Product Improvement Patent, or, where relating to Licensed Products, Joint Patent that is being prosecuted or maintained by Takeda Patents in the Territory and that is applicable to the in the Ultragenyx FieldTerritories, then Takeda AIT Therapeutics shall provide Ultragenyx Circassia with written notice of such determination within a period of time reasonably necessary to allow Ultragenyx Circassia to determine, in its sole discretion, determine its interest in such AIT Therapeutics Patent(s) (which notice by Takeda shall be given no later than sixty (60) days prior to or Improvement Patent(s), as the final deadline for any pending action or response that case may be due with respect to such Patent(s) with be. In the applicable patent authority). If Ultragenyx event Circassia provides timely written notice expressing its interest in continuing to support prosecution of such AIT Therapeutics Patent(s) or Improvement Patent(s), Ultragenyx then upon Circassia’s written request AIT Therapeutics shall promptly assign and transfer to Circassia all right, title and interest in and to such AIT Therapeutics Patent(s) or Improvement Patent(s), as the case may be, and AIT Therapeutics shall execute and deliver to Circassia such assignments or other instruments of transfer as Circassia may reasonably request to evidence such assignment and transfer as a matter of record. Notwithstanding the foregoing, in the event such transfer or assignment negatively impacts the enforceability or validity of any other patent or claim within the AIT Therapeutics Patents or Improvement Patents, AIT Therapeutics shall not be required to assign such patent. AIT Therapeutics hereby appoints Circassia as its attorney-in-fact to sign such documents as Circassia deems necessary for Circassia to obtain ownership and to apply for, secure, and maintain patent or other proprietary protection of such AIT Therapeutics Patent(s) or Improvement Patent(s) if Circassia is unable, after reasonable inquiry, to obtain AIT Therapeutics’ (or its employee’s or agent’s) signature on such a document. Thereafter, Circassia (i) shall have the right to pursue prosecute and maintain such AIT Therapeutics Patent(s) or Improvement Patent(s) in the filing or support Territories, and (ii) shall bear all of the continued costs of preparation, filing, prosecution or and maintenance of such assigned and transferred AIT Therapeutics Patents and Takeda Improvement Patents, and Circassia may prosecute such Patents at its sole discretion; provided, however, in the event that Circassia decides to abandon or not maintain any such AIT Therapeutics Patent(s) or Improvement Patent(s), then Circassia shall promptly provide AIT Therapeutics with written notice of such decision. The Parties shall determine which Party will file, prosecute and maintain any Patent claiming or covering any jointly owned invention (“Joint Patent”). In the case of any Improvement Patent or Joint Patent, the Party filing such patent application (the “Filing Party”) shall deliver to the other Party (the “Non-Filing Party”) drafts of all such patent applications respecting such Improvement Patent or Joint Patent, as the case may be, in confidence before each such patent application is filed, and shall give the Non-Filing Party a reasonable period (not to exceed ninety (90) days) in which to review and comment thereon. Likewise, the Filing Party shall deliver to the Non-Filing Party, or shall cause the Filing Party’s patent counsel to deliver to the Non-Filing Party, copies of all office actions and other correspondence from the USPTO and all other patent offices in the Territories respecting any such Improvement Patent or Joint Patent, as the case may be, and all proposed responses thereto for the Non-Filing Party’s review, and shall provide to Ultragenyx, subject to reimbursement of Takeda’s outthe Non-of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Ultragenyx to take such action to establish or preserve any such Patents. If Ultragenyx pursues the filing or support of such Patents and Takeda continues to pursue a Licensed [***] Product in the Takeda Field, it shall provide Takeda Filing Party a reasonable opportunity to review and comment thereon. The Filing Party shall use Commercially Reasonable Efforts to accommodate the suggestions of the Non-Filing Party on material communications from any such patent application, amendment or office action response. For the avoidance of doubt, the Filing Party shall have the final decision with respect to any patent authority in the Territory regarding such Patents application, amendment or office action response. AIT Therapeutics / Circassia License, Development and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Ultragenyx shall consider Takeda’s comments regarding such communications and drafts in good faith.Commercialization Agreement

Prosecution of Patents. (a) Licensed [***] Patents, Licensed Product Improvement Patents, and Joint Patents relating Subject to Licensed Products. Except as otherwise provided in this Section 12.3(a9.3(b), as between the Parties, Takeda shall Licensee will have the sole first right and authority to prepare, file, prosecute and maintain the Licensed Licensee Patents, the Licensor Patents and any Patents Covering Inventions (whether Licensee Inventions, Licensor Inventions or Joint Inventions) directed to any Compound or Product, including the manufacture or use thereof (collectively, the “Licensee Prosecuted Patents”), including handling re-examinations and reissues together with the conduct of interferences, derivation proceedings, pre-and post-grant opposition proceedings, post-grant patent proceedings (such as inter partes review and post grant review) (collectively, the “Prosecution and Maintenance”). Licensor hereby delegates to Licensee all of Licensor’s rights, subject to all of Licensor’s obligations, under the Principal License Agreement to Prosecute and Maintain all Patents included in the Sublicensed Rights. As between the Parties, [***] Patent, Licensed Product Improvement Patents, and, where relating incurred after the Effective Date only in connection with the Prosecution and Maintenance of any Licensee Prosecuted Patent that Licensee chooses to Licensed Products, Joint Patents (collectively, the “[***] Patent Prosecution”) on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews Prosecute and oppositions).Takeda shall bear all costs of preparation, filing, prosecution and maintenance of the [***] Patent Prosecution Maintain in the Territory. Provided that Ultragenyx’s rights with respect to the applicable Licensed Product have not terminatedBefore any substantive prosecution filing, Takeda, upon Ultragenyx’s request, Licensee shall provide Ultragenyx Licensor with a reasonable opportunity to review and comment on such prosecution efforts regarding the Licensee Prosecuted Patents as follows: Licensee shall provide Licensor with copies of all material communications from any patent authority in the Territory regarding the [***] Patent Prosecution Licensee Prosecuted Patents, and will provide Licensor, for its review and comment, with drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Takeda shall consider Ultragenyx’s comments regarding such communications and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory in the Ultragenyx Field. If Ultragenyx’s rights with respect to the applicable Licensed Product have not terminated and Takeda determines in its sole discretion to abandon or not maintain any Licensed [***] Patent, Licensed Product Improvement Patent, or, where relating to Licensed Products, Joint Patent that is being prosecuted or maintained by Takeda in the Territory and that is applicable to the in the Ultragenyx Field, then Takeda shall provide Ultragenyx with written notice of such determination within a period reasonable amount of time reasonably necessary to allow Ultragenyx to determine, in its sole discretion, its interest in such Patent(s) (which notice by Takeda shall be given no later than sixty (60) days prior to the final deadline for any pending action or response that may be due with respect to such Patent(s) with the applicable patent authority). If Ultragenyx provides timely written notice expressing its interest in continuing to support such Patent(s), Ultragenyx shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Takeda shall provide to Ultragenyx, subject to reimbursement of Takeda’s out-of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Ultragenyx to take such action to establish or preserve any such Patents. If Ultragenyx pursues the filing or support of such Patents and Takeda continues to pursue a Licensed [***] Product in the Takeda Field, it shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding such Patents and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Ultragenyx Licensee shall consider Takeda’s comments regarding such communications and drafts in good faithfaith any reasonable comments thereto provided by Licensor in connection with the prosecution of the Licensee Prosecuted Patents. Each Party shall provide the other Party all reasonable assistance and cooperation (at the other Party’s cost) in the Patent Prosecution and Maintenance efforts provided in this Section 9.3(a), including executing any other required documents or instruments for such filings, Prosecution and Maintenance. For purpose of clarity, Licensee may at its discretion file one or more new Patent applications and may include in such applications data or discoveries included within the Licensed Know-How or other Information and such new Patent application(s)s will be Licensed Patents.

Prosecution of Patents. (a) Licensed [***] Patents, Licensed Product Improvement Patents, and Joint Patents relating Subject to Licensed Products. Except as otherwise provided in this Section 12.3(a9.3(b), as between the Parties, Takeda shall have and after the sole right and authority to Option exercise for a given Development Candidate, Licensee may prepare, file, prosecute and maintain the Licensed [***] Patentpatents in any and all jurisdictions worldwide covering Licensee Inventions, Licensed Product Improvement Patents, and, where relating Licensor Inventions and Joint Inventions solely for patents which include claims directed specifically to Licensed Products, Joint Patents any Collaboration Development Candidates and do not include any claims covering any SNA Platform Technology Inventions (collectively, the “[***] Patent ProsecutionLicensee Prosecuted Patents”) on a worldwide basis (including ). As between the right to defend in patent office proceedings such as inter partes reviewsParties, post grant reviews Licensee will bear and oppositions).Takeda shall bear be solely responsible for all costs of incurred after the Effective Date only in connection with the preparation, filing, prosecution and or maintenance of the [***] any Licensee Prosecuted Patent Prosecution that it chooses to prepare, file, prosecute or maintain in the Territory. Provided that Ultragenyx’s rights Before any substantive prosecution filing, Licensee will provide Licensor with respect to the applicable Licensed Product have not terminated, Takeda, upon Ultragenyx’s request, shall provide Ultragenyx a reasonable opportunity to review and comment on such prosecution efforts regarding the Licensee Prosecuted Patents as follows: Licensee will promptly provide Licensor with copies of all material communications from any patent authority in the Territory regarding the [***] Patent Prosecution Licensee Prosecuted Patents, and will provide Licensor, for its review and comment, with drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Takeda shall consider Ultragenyx’s comments regarding such communications and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory in the Ultragenyx Field. If Ultragenyx’s rights with respect to the applicable Licensed Product have not terminated and Takeda determines in its sole discretion to abandon or not maintain any Licensed [***] Patent, Licensed Product Improvement Patent, or, where relating to Licensed Products, Joint Patent that is being prosecuted or maintained by Takeda in the Territory and that is applicable to the in the Ultragenyx Field, then Takeda shall provide Ultragenyx with written notice of such determination within a period reasonable amount of time reasonably necessary to allow Ultragenyx to determine, in its sole discretion, its interest in such Patent(s) (which notice by Takeda shall be given no later than sixty (60) days prior to the final deadline for any pending action or response that may be due with respect to such Patent(s) with the applicable patent authority). If Ultragenyx provides timely written notice expressing its interest in continuing to support such Patent(s), Ultragenyx shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Takeda shall provide to Ultragenyx, subject to reimbursement of Takeda’s out-of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Ultragenyx to take such action to establish or preserve any such Patents. If Ultragenyx pursues the filing or support of such Patents and Takeda continues to pursue a Licensed [***] Product in the Takeda Field, it shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding such Patents and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Ultragenyx shall Licensee will consider Takeda’s comments regarding such communications and drafts in good faithfaith any reasonable comments thereto provided by Licensor in connection with the prosecution of the Licensee Prosecuted Patents. Each Party will provide the other Party all reasonable assistance and cooperation in the patent prosecution efforts provided in this Section 9.3(a), including executing any other required documents or instruments for such prosecution. Notwithstanding the foregoing, (i) Licensor will be responsible for preparing, filing, prosecuting and maintaining any patents covering any Licensor Inventions and Joint Inventions prior to the Option exercise, including any costs associated therewith; (ii) Licensor will be responsible for preparing, filing, prosecuting and maintaining any patents covering SNA Platform Technology Inventions that are Licensor Inventions or Joint Inventions, including any costs associated therewith; and (iii) Licensor will be responsible for preparing, filing, prosecuting and maintaining any patents covering SNA Platform Technology Inventions that are Licensee Inventions, and all costs associated therewith, regardless of the Option exercise. Before any substantive prosecution filing for patents covering SNA Platform Technology Inventions by Licensor, Licensor will provide Licensee reasonable opportunity to review and comment with respect to such patents. Before any filing for patents covering SNA Platform Technology Inventions invented by Licensee, Licensor will provide Licensee reasonable opportunity to review and comment with respect to such patent filings.

Prosecution of Patents. (a) Licensed [***] Patents, Licensed Product Improvement Patents, and Joint Patents relating Subject to Licensed Products. Except as otherwise provided in this Section 12.3(a)9.2(b) with respect to a Licensor Patent, as between the Parties, Takeda shall Licensee will have the sole exclusive right and authority to prepare, file, prosecute and maintain the Licensed Licensor Patents, including handling re-examinations and reissues together with the conduct of interferences, derivation proceedings, pre-and post-grant opposition proceedings, post-grant patent proceedings (such as inter partes review and post grant review) (collectively, the “Prosecution and Maintenance”). As between the Parties, [***] Patent, Licensed Product Improvement Patents, and, where relating incurred after the Effective Date only in connection with the Prosecution and Maintenance of any Licensor Patent that it chooses to Licensed Products, Joint Patents (collectively, the “[***] Patent Prosecution”) on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews Prosecute and oppositions).Takeda shall bear all costs of preparation, filing, prosecution and maintenance of the [***] Patent Prosecution Maintain in the Territory. Provided that Ultragenyx’s rights Before any substantive prosecution filing, Licensee will provide Licensor with respect to the applicable Licensed Product have not terminated, Takeda, upon Ultragenyx’s request, shall provide Ultragenyx a reasonable opportunity to review and comment on such prosecution efforts regarding the Licensor Patents as follows: Licensee will provide Licensor with copies of all material communications from any patent authority in the Territory regarding the [***] Patent Prosecution Licensor Patents, and will provide Licensor, for its review and comment, with drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Takeda shall consider Ultragenyx’s comments regarding such communications and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory in the Ultragenyx Field. If Ultragenyx’s rights with respect to the applicable Licensed Product have not terminated and Takeda determines in its sole discretion to abandon or not maintain any Licensed [***] Patent, Licensed Product Improvement Patent, or, where relating to Licensed Products, Joint Patent that is being prosecuted or maintained by Takeda in the Territory and that is applicable to the in the Ultragenyx Field, then Takeda shall provide Ultragenyx with written notice of such determination within a period reasonable amount of time reasonably necessary to allow Ultragenyx to determine, in its sole discretion, its interest in such Patent(s) (which notice by Takeda shall be given no later than sixty (60) days prior to the final deadline for any pending action or response that may be due with respect to such Patent(s) with the applicable patent authority). If Ultragenyx provides timely written notice expressing its interest in continuing to support such Patent(s), Ultragenyx shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Takeda shall provide to Ultragenyx, subject to reimbursement of Takeda’s out-of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Ultragenyx to take such action to establish or preserve any such Patents. If Ultragenyx pursues the filing or support of such Patents and Takeda continues to pursue a Licensed [***] Product in the Takeda Field, it shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding such Patents and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Ultragenyx shall Licensee will consider Takeda’s comments regarding such communications and drafts in good faithfaith any reasonable comments thereto provided by Licensor in connection with the prosecution of the Licensor Patents. Each Party will provide the other Party all reasonable assistance and cooperation (at the other Party’s cost) in the Prosecution and Maintenance efforts of any Licensor Patent provided in this Section 9.2(a), including executing any other required documents or instruments for such filings, Prosecution and Maintenance.