Common use of Before Option Exercise Clause in Contracts

Before Option Exercise. Prior to the exercise of the applicable Option with respect to a Licensed Compound, Hutchison will be responsible for the Prosecution and Maintenance of any (a) Licensed Patents and (b) Patent Rights included in the Joint IP (each such Patent Rights described in sub-clause (b), a “Joint Patent”), in each case ((a)-(b)) necessary or reasonably useful for the Development, Manufacture or Commercialization of any Licensed Product that contains such Licensed Compound, using outside counsel reasonably acceptable to Inmagene. The Licensed Patents will be Prosecuted and Maintained in Hutchison’s name and [***], and the Joint Patents will be Prosecuted and Maintained in both Parties’ names and the costs thereof will be [***]. Hutchison will notify Inmagene of any decision not to file applications for, cease the Prosecution and Maintenance of or not continue to [***] for the Prosecution and Maintenance of any such Patent Rights described in this Section 9.2.1. Hutchison will provide such notice at least [***] ([***]) [***] prior to any filing or payment due date, or any other due date that requires action, in connection with such Patent Right. In such event, if Hutchison does not have a bona fide good faith reason for deciding not to Prosecute and Maintain such Patent Right, then Hutchison will permit Inmagene, at its sole discretion and [***], to file or to continue Prosecution and Maintenance of such Patent Right during the Option Term. For the Licensed Patents listed on Schedule 9.2.1 which are Licensed Patents that claim both the Licensed Compounds and other compounds that Hutchison, its Affiliates, licensees or sublicensees is developing (each, a “Hutchison Retained Compound”), Hutchison shall use reasonable efforts, but shall have no obligation, to revise those claims to separate out the Licensed Compounds, and thereafter any patent application and patents that no longer cover any Licensed Compounds or Licensed Products shall no longer be included in Licensed Patents under this Agreement.

Before Option Exercise. Prior (i) On a Target Program-by-Target Program basis, prior to the exercise earlier of (A) the applicable Option Exercise Date and (B) the last day of the applicable Option with respect Exercise Period, Proteovant will have the first right, but not the obligation, at its sole expense, to a Licensed Compounddraft, Hutchison will be responsible for file, prosecute and maintain (including the Prosecution and Maintenance defense of any (aoppositions, appeals, interferences, reissue proceedings, reexaminations and post-grant and administrative proceedings) Licensed Patents and (b) Patent Rights included in all jurisdictions in the Joint IP Territory (each such Patent Rights described in sub-clause (b)collectively, a “Joint PatentProsecute”), in each case ((a)-(b)) necessary or reasonably useful for the Development, Manufacture or Commercialization of any Licensed Product that contains such Licensed Compound, using outside counsel reasonably acceptable to Inmagene. The Licensed Proteovant Patents will be Prosecuted and Maintained in Hutchison’s name and [***], and the Joint Patents using outside counsel of its choice and reasonably acceptable to Blueprint. Proteovant or Proteovant’s outside counsel will be Prosecuted and Maintained in both Parties’ names keep Blueprint reasonably informed of its progress with respect to the Proteovant Patents and the costs thereof Joint Patents and Proteovant will be [***]. Hutchison will notify Inmagene provide Blueprint with copies of any decision material documents it receives or prepares in connection with the Prosecution of such Patents filed in the applicable Territory and will inform Blueprint of the progress of such documents. Before filing any document with a patent office in connection with the Prosecution of the Proteovant Patents or Joint Patents, Proteovant or Proteovant’s outside counsel will provide a copy of such document to Blueprint sufficiently in advance to enable Blueprint to comment on it, and Proteovant will give due consideration to such comments and will reasonably incorporate any of such comments in Proteovant’s filings or responses to the extent such comments are provided sufficiently in advance of any applicable filing deadlines. In the event that Proteovant elects not to file applications forProsecute in any country any Patent within the Proteovant Patents or Joint Patents, cease the Prosecution and Maintenance of or not continue to [***] for the Prosecution and Maintenance of any such Patent Rights described in this Section 9.2.1. Hutchison Proteovant will provide such notice give Blueprint at least [***] notice before any relevant deadline and provide to Blueprint information it reasonably requests relating to such Patent. Blueprint will then have the right to assume responsibility, using outside counsel of its choice, for the Prosecution of such Patent. If Blueprint assumes responsibility for the Proteovant Patents or Joint Patents as set forth above, then the Patent Prosecution Costs incurred by Blueprint and its counsel in the course of such Prosecution will thereafter be borne by Blueprint. ([***]ii) The Parties will cooperate [***] to ensure that, on a Target Program-by-Target Program basis, prior to any filing or payment due date, or any other due date that requires action, in connection with such Patent Right. In such event, if Hutchison does not have a bona fide good faith reason for deciding not to Prosecute and Maintain such Patent Right, then Hutchison will permit Inmagene, at its sole discretion and [***], to file or to continue Prosecution and Maintenance the earlier of such Patent Right during exercise of the Option Term. For by Blueprint with respect to such Target Program in accordance with Section 3.3 and expiration of the Licensed Patents listed on Schedule 9.2.1 which Option Exercise Period for such Target Program, patent applications Covering the Collaboration Compounds are Licensed Patents made at a time and with a scope that claim both will maximize the commercial potential of any related Licensed Compounds and other compounds that HutchisonLicensed Products. For clarity, its Affiliates, licensees or sublicensees is developing (each, a “Hutchison Retained Compound”), Hutchison shall use reasonable efforts, but shall have no obligation, the Parties may agree not to revise those claims to separate out the Licensed Compounds, and thereafter file any patent application and patents that no longer cover any Licensed Compounds or Licensed Products shall no longer be included in Licensed Patents under this Agreementapplications prior to Option Exercise by Blueprint.