Common use of CONFIDENTIAL TREATMENT REQUESTED Clause in Contracts

CONFIDENTIAL TREATMENT REQUESTED. Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx 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 Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Product.

Appears in 4 contracts

Samples: Confidential Treatment Requested (Ultragenyx Pharmaceutical Inc.), Confidential Treatment Requested (Ultragenyx Pharmaceutical Inc.), Confidential Treatment Requested (Ultragenyx Pharmaceutical Inc.)

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CONFIDENTIAL TREATMENT REQUESTED. Certain information necessary to enable Alimera and/or its subcontractors to manufacture and perform quality testing on Medidur FA to satisfy Commercial Supply Requirements, all to the extent set forth in this document has been omitted the CDS Development Budget and filed separately reimbursed pursuant to Section 3.1.2. CDS and/or its Permitted Subcontractors shall be responsible for the following activities in association therewith (to the extent set forth in the CDS Development Budget and any costs of which will be reimbursed by Alimera in accordance with Section 3.1.2): (a) assist with technology transfer to commercial manufacture site, (b) assist with manufacturing scale-up and validation activities, and (c) transfer analytical methods to commercial manufacture site for stability monitoring. In addition, within ninety (90) days after the Securities Amendment Effective Date, CDS shall provide to Alimera a Pharmaceutical Development Report, the form and Exchange Commission. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis content of which should follow the ICH Guidance documents Q8 Pharmaceutical Development (including the right to defend in patent office proceedings such as inter partes reviewsdated May 19, post grant reviews 2006) and oppositionsdraft Q8(R1) Pharmaceutical Development Revision 1 (dated January 10, 2008). Ultragenyx Within thirty (30) days after receipt of such report, Alimera shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents notify CDS in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents and drafts of any material filings writing whether such report is accepted 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 with a view to maximizing the Patent protection and scope in the Territory; rejected (provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx shall rejection must 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 authorityreasonable). If Takeda provides timely written Alimera notifies CDS of its acceptance or fails to notify CDS of its reasonable rejection within the thirty (30) day time period, then such report is deemed to be accepted. If Alimera reasonably rejects the report, then it shall notify CDS in writing of its reasons, with reasonable specificity, for the rejection, and CDS shall use commercially reasonable efforts to revise the report to address such reasons within ten (10) Business Days following receipt of such rejection notice expressing its interest and reasons. CDS shall submit the revised report to Alimera for another review in continuing to support such Patent(s), Takeda accordance with the acceptance procedures and timeline specified above. Alimera shall have primary responsibility, with reasonable input and assistance from CDS, for the right preparation of the Chemistry, Manufacturing and Controls (the “CMC”) section of Alimera’s IND and NDA filings. Technology transfer shall be effected in accordance with GMP and ISO guidelines, to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx a reasonable opportunity to review and comment on material communications from any patent authority extent applicable for Commercialization 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productrelevant country.

Appears in 2 contracts

Samples: Collaboration Agreement (Alimera Sciences Inc), Collaboration Agreement (Alimera Sciences Inc)

CONFIDENTIAL TREATMENT REQUESTED. Certain [*]. ALIMERA shall include in any sublicense granted pursuant to this Agreement, (i) a provision requiring the sublicensee to indemnify EMORY and maintain liability coverage substantially to the same extent that ALIMERA is so required pursuant to Articles 10.2 and 10.4 of this Agreement and (ii) the right for EMORY or ALIMERA to audit the sublicensee to the same extent that ALIMERA is so required pursuant to Article 4.4 of this Agreement. Notwithstanding the foregoing, [*]. ALIMERA shall provide EMORY with complete copies of all sublicense agreements within [*] after their execution date, provided that ALIMERA shall have the right, prior to disclosing to EMORY, to redact such copies to remove the confidential business information in this document has been omitted and filed separately with of the Securities and Exchange Commission. Confidential treatment has been requested with respect sublicensee to omitted portions marked “***”. on a worldwide basis (the extent that such information does not relate to the Licensed Patents and/or Licensed Technology, including the right business plans and research plans of the sublicensee related solely to defend in patent office proceedings such as inter partes reviewstechnology other than the Licensed Patents and/or Licensed Technology. For the avoidance of doubt, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in ALIMERA may not remove the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice economic terms of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx shall be given no later than sixty (60) days prior sublicense agreements to the final deadline extent that such information relates to the Licensed Patents and/or Licensed Technology. EMORY shall treat all copies of sublicense agreements and other sublicensee (or potential sublicensee) information received from ALIMERA as Information pursuant to Article 11 below. Upon termination of this Agreement for any pending action or response that may be due with respect to such Patent(s) with the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s)reason, Takeda any sublicensee shall have the right to pursue seek a license from EMORY to the filing or support the continued prosecution or maintenance of such Licensed Patents and Ultragenyx the Licensed Technology, and EMORY agrees to negotiate such licenses in good faith under reasonable terms and conditions (e.g., under terms and conditions substantially similar to those herein). At the request of ALIMERA, EMORY agrees to [*]. ALIMERA shall provide ensure that any sublicense agreement it enters into with any sublicensee includes a provision that requires ALIMERA to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take terminate such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx a reasonable opportunity to review and comment on material communications from any patent authority sublicense in the Territory regarding event such Patents and drafts sublicensee challenges, directly or indirectly, the validity, enforceability and/or scope of any material filings claim within the Licensed Patents in a court or responses to be made to such patent authorities in advance other governmental agency of submitting such filings or responses. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productcompetent jurisdiction.

Appears in 2 contracts

Samples: Confidential Treatment Requested (Alimera Sciences Inc), Confidential Treatment Requested (Alimera Sciences Inc)

CONFIDENTIAL TREATMENT REQUESTED. Certain information Permittee and Carrier Users and WTC System End-Users (subject in this document has been omitted and filed separately with both cases to the Securities and Exchange Commission. Confidential treatment has been requested consent of the Port Authority) with respect to omitted portions marked “***”. on a worldwide basis equipment owned by Carrier Users or the WTC System End-Users as the case may be, title to all fixtures and equipment (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents defined in the Territory. During NYUCC) forming a part of the Takeda Option TermWTC Fiber Backbone System, Ultragenyx, upon Takeda’s requestincluding but not limited to the Sumitomo “FutureFlex” fiber optic conduit, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority immediately vest in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating Port Authority upon the first to Ultragenyx Pipeline Products, Joint Patents and drafts occur of any material filings affixation to the WTC Facility 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice first use of such determination within a period of time reasonably necessary to allow Takeda to determine, items in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx WTC Fiber Backbone System Operations. The Permittee or BRAM 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 Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall each have the right to pursue install replacements for, and the filing right and the obligation to modify or support repair, any or all of the continued prosecution foregoing fixtures and equipment forming a part of the WTC Fiber Backbone System. Title to such replacements shall vest in the Port Authority in the manner provided above. Title to the fixtures and equipment so replaced shall pass to the Permittee or maintenance to BRAM, as provided in the WTC Fiber Backbone Agreement. Title to WTC Fiber Backbone System software licenses, equipment warranties and service contracts, etc. to the extent the terms under which the Permittee or BRAM, as the case may be, has obtained the same, permit title therein to be transferred to the Port Authority, shall vest in the Port Authority upon the execution thereof or at the first possible time thereafter as title thereto may vest in the Port Authority. Title to all other assets forming a part of such Patents the WTC Fiber Backbone System, including all intangible assets, shall remain vested in the Permittee or BRAM, as provided in the WTC Fiber Backbone Agreement The Permittee shall promptly execute and Ultragenyx shall provide to Takeda, subject to reimbursement deliver bills of Ultragenyx’s out- of-pocket costs, sale and all unpublished patent applications and any other information and documents necessary or convenient in order to permit Takeda evidence the transfer of title to take such action the Port Authority of all the items mentioned in this paragraph. The Port Authority hereby grants to establish or preserve any such Patents. If Takeda pursues the filing or support Permittee (and through the Permittee, to BRAM) an exclusive right to use all parts of such Patentsthe WTC Fiber Backbone System to which title is being conveyed to the Port Authority pursuant to this Section 5 (h), it which use shall provide Ultragenyx a reasonable opportunity to review and comment on material communications from any patent authority be in the Territory regarding such Patents manner permitted by this Agreement This right to use shall commence upon the vesting of title to the Port Authority as hereinabove provided 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 Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding continue throughout the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling term of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productpermission granted to the Permittee to operate the WTC Fiber Backbone System.

Appears in 2 contracts

Samples: Confidential Treatment Requested (Boingo Wireless Inc), Confidential Treatment Requested (Boingo Wireless Inc)

CONFIDENTIAL TREATMENT REQUESTED. Certain information in this document has been omitted 5.1.3 If requested by Alliance and filed separately with to the Securities extent commercially practicable, Inhale shall seek separate divisionals and Exchange Commissioncontinuations for claims under the Assigned Patent Rights, MediSpheres™ Assigned Patent Rights and Bioavailability Assigned Patent Rights for Liquid Dose Instillation and, as to the Bioavailability Assigned Patent Rights, for applications outside the Inhale Field. Confidential treatment has been requested with With respect to omitted portions marked “***”. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents and drafts of any material filings or responses to be made to each such patent authorities in advance of submitting such filings application and patent issuing therefrom within the Assigned Patent Rights, MediSpheres™ Assigned Patent Rights or responses. Ultragenyx shall consider Takeda’s comments regarding such communications and drafts in good faith with a view Bioavailability Assigned Patent Rights that solely claims an application or use for Liquid Dose Instillation (or, as to maximizing the Bioavailability Assigned Patent protection and scope in Rights, for applications outside the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option TermInhale Field), if Ultragenyx determines in Alliance shall, at its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, cost and in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx 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 Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling assume control of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productpatent application or patent. For any patent application or patent for which Alliance assumes such responsibility under this Section 5.1.3, Alliance (a) shall consult with Inhale regarding the prosecution and maintenance of such Assigned Patent Rights, MediSpheres™ Assigned Patent Rights or Bioavailability Assigned Patent Rights, and (b) shall inform Inhale promptly of any substantive action or proposed action with respect to such Assigned Patent Rights, MediSpheres™ Assigned Patent Rights or Bioavailability Assigned Patent Rights and shall provide Inhale with advance copies of all proposed responses thereto at least ten (10) business day in advance of any proposed action. Notwithstanding the foregoing, if Alliance proposes to make any statement or take any action that is reasonably likely to have a material adverse effect on Inhale’s ability to obtain issued claims within the Assigned Patent Rights, MediSpheres™Assigned Patent Rights or Bioavailability Assigned Patent Rights with application in the Inhale Field, and during such ten (10) business day period, Inhale gives reasonably specific written notice thereof stating reasonably acceptable grounds therefor, Alliance shall not make such statement or take such action.

Appears in 2 contracts

Samples: Supplemental Agreement (Alliance Pharmaceutical Corp), Supplemental Agreement (Alliance Pharmaceutical Corp)

CONFIDENTIAL TREATMENT REQUESTED. Certain information in this document has been omitted 5.2.3 Xxxxx and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx Meiji shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with discuss and decide whether a view to maximizing the Patent patent application or similar protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx shall be given no later than sixty (60) days prior to filed for each invention within the final deadline for any pending action or response that may be due with respect to such Patent(s) with the applicable patent authority)Jointly-Generated Intellectual Property. If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda Xxxxx shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of control the preparation, filing, prosecution and maintenance of Patents covering the Jointly-Generated Patent Rights at its sole expense on a global basis. Xxxxx shall keep Meiji reasonably apprised of material developments regarding the preparation, filing, prosecution and maintenance of Jointly-Generated Patent Rights, and shall provide Meiji with a reasonable opportunity to comment and make requests regarding the same. Meiji shall provide any comments and make any requests promptly and Xxxxx shall take account of Meiji’ comments and requests in good faith. Meiji shall cooperate with Xxxxx to the extent reasonably necessary for Xxxxx to prepare, file, prosecute and maintain the Jointly-Generated Patent Rights, including the execution and delivery of documents at no cost to Xxxxx. In the event Xxxxx decides that it no longer wishes to prosecute or maintain any particular Jointly-Generated Patent Right in a specific country, Xxxxx shall notify Meiji and provide Meiji with an opportunity to take over control of the prosecution and/or maintenance of such Ultragenyx Pipeline ProductJointly-Generated Patent Right in such country at Meiji’ sole expense; provided, however, that if Xxxxx ceases to prosecute or maintain a Jointly-Generated Patent Right for strategic purposes, as set forth below, Meiji will not be granted the right to take over such activities. A decision to cease prosecution and/or maintenance of a Jointly-Generated Patent Right in a country shall be deemed to be “strategic” if it is made for reasons that in light of the likely outcomes of prosecution and/or maintenance of such Jointly-Generated Patent Right, cessation of prosecution and/or maintenance of such Jointly-Generated Patent Right will, in the opinion of Xxxxx and Meiji or, if Xxxxx and Meiji do not reach consensus, in the opinion of outside patent counsel selected by Xxxxx and Meiji, likely be more beneficial for the protection, validity or enforceability of another Jointly-Generated Patent Right, Xxxxx Patent Rights and/or Meiji Patent Rights in such country or other countries. In the event that Meiji takes over prosecution and maintenance of a Jointly-Generated Patent Right under this Section 5.2.3(i), Xxxxx shall assign its joint ownership interest to Meiji, free of charge, and such Jointly-Generated Patent Right so assigned shall no longer be deemed to be a Jointly-Generated Patent Right and shall become a Patent Right owned by Meiji but shall not be deemed to be a Meiji Patent Right licensed to Xxxxx under this Agreement.

Appears in 1 contract

Samples: Confidential Treatment Requested (Spero Therapeutics, Inc.)

CONFIDENTIAL TREATMENT REQUESTED. Certain information Pursuant to the terms of the Agreement, Enumeral will indemnify Pieris Indemnitees (as defined in this document the Agreement) against certain claims specified therein, including with respect to breaches of representations and warranties, as well as claims by the Massachusetts Institute of Technology and other specified entities who are parties to an agreement with Enumeral. In addition, Pieris will indemnify Enumeral Indemnitees (as defined in the Agreement) against certain claims specified therein, including with respect to breaches of representations and warranties, as well as with respect to the development, commercialization, manufacture or use of any Product before or after Marketing Authorization (as such terms are defined in the Agreement). The Agreement also contains customary representations and warranties for both Enumeral and Pieris. The term of the Agreement ends upon the expiration of the last to expire patent covered under the license. The Agreement may be terminated by Pieris on 30 days’ notice and by Enumeral upon 60 days’ notice of a material breach by Pieris (or 30 days with respect to a breach of payment obligations by Pieris), provided that Pieris has not cured such breach and that dispute resolution procedures specified in the Agreement have been followed. The Agreement will also automatically terminate if Pieris elects to not make the maintenance fee payment described above. Portions of the exhibit, indicated by the xxxx “[***],” were omitted and have been filed separately with the Securities and Exchange CommissionCommission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. Confidential treatment CONFIDENTIAL TREATMENT REQUESTED Exhibit E Enumeral Press Release Enumeral and Pieris Pharmaceuticals Enter into License and Transfer Agreement CAMBRIDGE, Mass.—April 18, 2016—Enumeral Biomedical Holdings, Inc. (OTCQB: ENUM) (“Enumeral” or the “Company”), a biotechnology company focused on discovering and developing novel antibody-based immunotherapies to help the immune system fight cancer and other diseases, today announced that it has been requested entered into a License and Transfer Agreement (the “License Agreement”) with respect to omitted portions marked Pieris Pharmaceuticals, Inc. and Pieris Pharmaceuticals GmbH (collectively, ***Pieris. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx Pursuant to the terms and conditions of the License Agreement, Pieris is licensing from Enumeral specified intellectual property related to Enumeral’s anti-PD-1 antibody program ENUM 388D4 for the potential development and commercialization by Pieris of novel multispecific therapeutic proteins comprising fusion proteins based on Pieris’ Anticalins® class of therapeutic proteins and Enumeral antibodies in the field of oncology. Under the License Agreement, Pieris has agreed to pay Enumeral a $250,000 initial license fee, and Enumeral is providing Pieris with sequence and related information for Enumeral’s 388D4 family of anti-PD-1 antibodies. The License Agreement provides that Pieris may continue the license by paying Enumeral an additional maintenance fee in the amount of $750,000 by May 31, 2016. In the event that Pieris does not pay this maintenance fee by May 31, 2016, the License Agreement expires and the license granted thereunder automatically terminates. If Pieris elects to continue the license and pays Enumeral the maintenance fee, the License Agreement provides that Pieris shall bear all costs also receive an exclusive twelve-month option to license Enumeral intellectual property related to an additional antibody program on the same terms and conditions as for the ENUM 388D4 family of preparationanti-PD-1 antibodies (the “Subsequent Option”). The antibody subject to the Subsequent Option will be selected by Pieris from a specified list of antibodies owned by Enumeral. In the event that Pieris exercises the Subsequent Option, filingPieris will pay Enumeral an additional undisclosed license fee. The terms of the License Agreement provide for Pieris to pay Enumeral development milestones of up to an aggregate of $37.8 million upon the achievement of specified events, prosecution as well as net sales milestone payments of up to an aggregate of $67.5 million upon the achievement of specified net sales thresholds. Under the License Agreement, Pieris also agrees to pay Enumeral royalties in the low-to-lower middle single digits as a percentage of net sales depending on the amount of net sales in the applicable years. In the event that Pieris licenses an additional antibody pursuant to the Subsequent Option, any resulting fusion protein products will be subject to the same royalties and maintenance development and sales milestones applicable to the fusion proteins linking PD-1 and Anticalins under the initial license. Portions of Ultragenyx Pipeline Patentsthe exhibit, Ultragenyx Pipeline Improvement Patents, Ultragenyx indicated by the xxxx “[***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in ],” were omitted and have been filed separately with the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review Securities and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx shall be given no later than sixty (60) days prior Exchange Commission pursuant to the final deadline for any pending action or response that may be due with respect Registrant’s application requesting confidential treatment pursuant to such Patent(s) with the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling Rule 24b-2 of the preparationSecurities Exchange Act of 1934, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productas amended.

Appears in 1 contract

Samples: License and Transfer Agreement (Pieris Pharmaceuticals, Inc.)

CONFIDENTIAL TREATMENT REQUESTED. PATENT MAINTENANCE AND ENFORCEMENT As provided for in Article 7 of the Collaboration Agreement. Neither Party is obligated to pay for patent costs or enforcement costs under this license as long as either the Collaboration Agreement or the 10% license pursuant to Section 11.5.1 of the Collaboration Agreement is in effect. If neither the Collaboration Agreement nor the 10% license pursuant to Section 11.5.1 of the Collaboration Agreement is in effect, then CDS shall have the primary control in filing, prosecution, maintenance and enforcement of CDS Patent Rights. The Parties shall split the patent costs. Any amounts recovered as a result of any infringement action taken by the Parties hereunder shall be first applied, on a pro-rata basis, to reimburse each Party for its out-of-pocket expenses incurred in connection with such action and the remainder, if any, shall be divided appropriately between the Parties with reference to [*]. REGULATORY All regulatory filings and/or Approvals related to the Option Product that are subject of this license will be immediately transferred to Alimera and Alimera shall own all such filings and Approvals. PATENT MARKING As provided in Section 7.7 of the Collaboration Agreement. INDEMNITY As provided for in Article 10, except that CDS shall not be responsible for product liability claims as described in Section 10.5 arising based on acts or omissions after the Option License Effective Date except to the extent the claims are attributable to CDS’ gross negligence or willful misconduct. REPORTS Alimera will provide to CDS a quarterly written account of the Net Sales of Option Products together with any relevant sublicense revenues and royalty payments. TERM; TERMINATION Commences upon Alimera’s exercise of its rights pursuant to Section 5.8.3 under the Collaboration Agreement (the “Option License Effective Date”) and expires upon the expiration or abandonment of the last Valid Claim included in the relevant CDS Patent Rights. Alimera may terminate the license at any time by giving CDS ninety (90) days written notice. CDS may terminate the license if Alimera: (a) fails to make any payment due under the license, unless Alimera makes such payments within sixty (60) days after receipt of written notice from CDS, or (b) commits a material breach of any other provision of the license, and such breach is not cured within ninety (90) days after receipt of written notice from CDS. * Certain information in this document has been omitted and filed separately with the Securities and Exchange Commissioncommission. Confidential treatment has been requested with respect to the omitted portions marked “***”. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx 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 Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productportions.

Appears in 1 contract

Samples: Collaboration Agreement (Alimera Sciences Inc)

CONFIDENTIAL TREATMENT REQUESTED. Certain information in this document has been omitted and filed separately with (i) If Tekmira issues the Securities and Exchange Commission. Confidential treatment has been requested with respect Product Notice prior to omitted portions marked “***”. on the acceptance of a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents bona fide IND filing by a Regulatory Authority in the Territory. During United States or one of the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in Major Markets for the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territoryapplicable Tekmira IOC Product, then Ultragenyx Alnylam shall provide Takeda with written notice have forty-five (45) days after receipt of such determination within a period Product Notice (the “Opportunity Response Period”) to notify Tekmira in writing of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(sTekmira IOC Product. If Alnylam notifies Tekmira in writing within the Opportunity Response Period that it is interested in such Tekmira IOC Product, then the Parties shall promptly commence good faith negotiations (in Tekmira’s case on an exclusive basis) for a period of up to ninety (90) days after Alnylam receives the Product Notice in an effort to conclude a mutually acceptable definitive agreement for the exclusive rights to Research, Develop and Commercialize such Tekmira IOC Product (“Product License”). The royalties payable to Tekmira in respect of such Tekmira IOC Product contained in such definitive agreement will be equal to the royalties and milestones payable with respect to an IOC Product under this Agreement; provided, however that Tekmira shall not be required to reimburse Alnylam for any royalties or milestones payable by Alnylam in respect of such Tekmira IOC Product under any Third Party agreements pursuant to which notice by Ultragenyx Alnylam Controls the Alnylam IOC Technology licensed to Tekmira under this Agreement that Cover such Tekmira IOC Product, and the agreement will otherwise contain reasonable and customary terms that are consistent with the terms of this Section 6.9(b); provided, however, that the Parties shall enter into good faith negotiations to agree upon ancillary financial provisions to compensate Tekmira for its prior reasonable Research and Development expenditures solely in connection with such Tekmira IOC Product, which expenditures shall be given no later than sixty based on the properly allocated costs and expenses directly incurred by Tekmira for the Research, Development and/or Manufacture of such Tekmira IOC Product through and including the Opportunity Response Period, which costs shall include all reasonable and properly allocated internal costs (60determined in accordance with the then-current Tekmira FTE Rate) days prior to for the final deadline for any pending action or response that may be due FTEs directly performing Research, Development and Manufacturing activities with respect to such Patent(s) with Tekmira IOC Product during such period and the reasonable, direct out-of-pocket expenses actually paid by Tekmira in its performance of the Research, Development and/or Manufacture of such Tekmira IOC Product. If Tekmira issues the Product Notice after the acceptance of a bona fide IND filing by a Regulatory Authority in the United States or one of the Major Markets for the applicable patent authority). If Takeda provides timely written notice expressing Tekmira IOC Product, then Alnylam shall have ninety (90) days after receipt of such Product Notice (the “Post-IND Opportunity Response Period”) to notify Tekmira in writing of its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such PatentsTekmira IOC Product. If Takeda pursues Alnylam notifies Tekmira in writing within the filing or support Post-IND Opportunity Response Period that it is interested in such Tekmira IOC Product, then the Parties will use Commercially Reasonable Efforts to negotiate and execute a definitive agreement for the Product reasonable and customary terms mutually agreeable to the Parties, including appropriate financial consideration after taking into account the maturity of such PatentsTekmira’s Research, Development and Commercialization activities through and including the Opportunity Response Period. If (x) Alnylam notifies Tekmira that it shall provide Ultragenyx is not interested in obtaining 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 Product License with respect to such patent authorities Tekmira IOC Product, (y) Alnylam does not notify Tekmira in advance of submitting writing within the Opportunity Response Period that it is interested in such filings Tekmira IOC Product, or responses. Takeda shall consider Takeda(z) despite each Party’s comments regarding such communications good faith efforts, Alnylam and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Tekmira are not able to reach agreement on and execute a definitive agreement for a Product License Agreement covering an Ultragenyx Pipeline Productwithin such one hundred and twenty (120) day period, the terms of then Tekmira may enter into negotiations with any Third Party for such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Tekmira IOC Product.

Appears in 1 contract

Samples: License and Collaboration Agreement (TEKMIRA PHARMACEUTICALS Corp)

CONFIDENTIAL TREATMENT REQUESTED. Certain information Confidential Execution Version connection therewith. In addition, NPLH shall promptly provide Everest with drafts of all proposed material filings and correspondence to any patent authority in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested Territory with respect to omitted portions marked “such Patents for Everest’s review and comment prior to the submission of such proposed filings and correspondence. NPLH shall confer with Everest and consider in good faith Everest’s comments prior to submitting such filings and correspondence, provided that Everest provides such comments within [***] Business Days (or a shorter period reasonably designated by NPLH if [***] Business Days is not practicable given the filing deadline) of receiving the draft filings and correspondence from NPLH. on The costs and expenses of such preparation, filing, prosecution and maintenance of the Licensed Patents, Joint Patents and Everest Patents shall be shared by NPLH and Everest such that NPLH shall be responsible for the costs and expenses of such preparation, filing, prosecution and maintenance of the Licensed Patents, Joint Patents and Everest Patents outside the Territory and Everest shall be responsible for the costs and expenses of such preparation, filing, prosecution and maintenance of the Licensed Patents, Joint Patents and Everest Patents in the Territory. For the avoidance of doubt, NPLH shall be responsible for all costs incurred prior to the Effective Date with respect to the prosecution and maintenance of any Licensed Patents. If Everest reasonably determines that a worldwide basis Licensed Patent added after the Effective Date (including other than Patent Rights added by an In-License Agreement that Everest has accepted pursuant to Section 2.4(b)(1) (In-License Agreements)) or Joint Patent that Everest subsequently determines is of low value to Everest, then Everest has the right upon at least [***] days’ prior notice to defend remove such Licensed Patent or Joint Patent from the Licensed Technology hereunder, in patent office proceedings which case, following delivery of such notice to NPLH, (1) the license of Licensed Technology to Everest under Section 2.1 (License to Everest) as inter partes reviews, post grant reviews to such Licensed Patent or Joint Patent shall be terminated; (2) Everest shall no longer be obligated to pay for any costs and oppositions). Ultragenyx shall bear all costs expenses of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, such Licensed Patent or Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patentas the case may be; and (3) if requested by NPLH, Ultragenyx [***] Patent andEverest shall assign, where relating and shall cause its Affiliates and its and their (sub)licensees and Sublicensees to Ultragenyx Pipeline Productsso assign, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territoryto NPLH, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determinewithout additional compensation, in its sole discretionEverest’s right, its title and interest in such Patent(s) (which notice by Ultragenyx shall be given no later than sixty (60) days prior and 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 Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productrelevant Joint Patent.

Appears in 1 contract

Samples: License Agreement (Spero Therapeutics, Inc.)

CONFIDENTIAL TREATMENT REQUESTED. Certain information in this document has been omitted IPC may establish protocols and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested procedures with respect to omitted portions marked “***”. on the cooperation of the Parties with respect to such, which shall include the right for a worldwide basis Party to request, in its discretion, that the other Party file at the requesting Party’s expense one or more continuation or divisional applications (as appropriate) for Patent for the express purpose of creating Product-Specific Program Patents or otherwise dividing Intrexon IP (including Channel-Related Program IP) and/or OvaXon Platform Inventions from Patents for Joint Program Inventions, which request shall be honored to the right extent reasonable, permitted by applicable laws, and otherwise consistent with this Agreement. During the Term, OvaXon shall have, the first right, but not the obligation, to defend in patent office proceedings such as inter partes reviews, post grant reviews conduct and oppositions). Ultragenyx shall bear all costs of preparation, direct the filing, prosecution and maintenance of Ultragenyx Pipeline Patentsany Patents for Joint Program Inventions consistent with any relevant strategies and determinations set forth by the IPC under the prior sentence with respect to such Patents and other Intrexon IP. To the extent that OvaXon exercises the rights to conduct and direct under the prior sentence, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating OvaXon shall (i) provide Intrexon in a timely manner with copies of all material correspondence regarding Joint Program Inventions to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any foreign or domestic patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents offices and patent prosecution counsel (including at a minimum any related drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or applications, official responses. Ultragenyx shall consider Takeda’s comments regarding such , and other substantive communications and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) filings at least fifteen (which notice by Ultragenyx shall be given no later than sixty (6015) days prior to the final any applicable deadline for review) for Intrexon review prior to filing; (ii) shall take into account any pending action Intrexon comments or response requests relating to relevant draft communications and filings and not submit such communications and filings without Intrexon approval and consent, such approval and consent not to be unreasonably delayed, withheld, or conditioned; (iii) keep Intrexon reasonably apprised regarding the status of any prior art searches, patentability analyses, draft patent applications, and other material information in the possession of OvaXon that may would be due with respect reasonably useful to such Patent(s) with Intrexon in assessing the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance scope and status of such Patents for Joint Program Inventions or otherwise in preventing a loss of rights by Intrexon to any related Inventions that are Intrexon IP; (iv) provide Intrexon with reasonable advance notice if OvaXon decides to abandon (or otherwise not file for or pursue) any such Patents for Joint Program Inventions so as to enable Intrexon sufficient lead time to prevent an unwanted loss of rights by Intrexon to Intrexon IP, including allowing Intrexon to file on and Ultragenyx shall provide prosecute Patents for such; (v) use qualified patent counsel reasonably acceptable to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications Intrexon; (vi) advise relevant OvaXon employees and any other information and documents agents as necessary to permit Takeda to take such action to establish facilitate compliance with the obligations of this Section 6.2(c), including advising outside OvaXon patent counsel regarding the obligations of this sentence or preserve any such Patents. If Takeda pursues relevant protocols and procedures established by the filing or support of such Patents, it shall provide Ultragenyx a reasonable opportunity to review IPC; and comment on material communications from any patent authority (vii) be solely responsible for all costs and expenses incurred by OvaXon 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of connection with the preparation, filing, prosecution and maintenance of Patents covering for Joint Program Inventions. To the extent that OvaXon does not exercise the rights to conduct and direct under the prior sentence (including an abandonment under clause (iv) of the prior sentence), Intrexon shall have the option to assume the preparation, filing, prosecution and maintenance of Patents for Joint Program Inventions at its own discretion and expense, subject to Intrexon providing OvaXon in a timely manner with copies of all material correspondence regarding Joint Program Inventions to and from any foreign or domestic patent offices and patent prosecution counsel (including at a minimum any related drafts of patent applications, official responses, and other substantive communications and filings at least fifteen (15) days prior to any applicable deadline for review) for OvaXon comment and review prior to filing. Intrexon and OvaXon shall reasonably cooperate in connection with such Ultragenyx Pipeline Productfiling, Portions of the exhibit, indicated by the xxxx “[***],” were omitted and have been filed separately with the Securities and Exchange Commission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.

Appears in 1 contract

Samples: Exclusive Channel Collaboration Agreement (OvaScience, Inc.)

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CONFIDENTIAL TREATMENT REQUESTED. Certain information CONFIDENTIAL PORTIONS INDICATED BY "*", HAVE BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION Sublicensee) with such quantities of Clinical Materials as may be reasonably requested by GENENTECH (or its Material Sublicensee) in this document has been omitted order to conduct all human clinical trials of Licensed Products through Phase II Clinical Studies. GENENTECH (or its Material Sublicensee) shall order all amounts of Clinical Materials, and filed separately IMMUNOGEN shall deliver all such ordered amounts, in accordance with forecasting parameters, advance ordering timeframes and delivery timeframes to be agreed upon by the Parties through the JPDC. IMMUNOGEN shall use its commercially reasonable efforts to deliver such amounts of Clinical Materials ordered in accordance with the Securities and Exchange Commission. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis foregoing (including such agreed upon timeframes) in a timely manner. In connection with any ordering of Clinical Materials by GENENTECH (or its Material Sublicensee), IMMUNOGEN shall provide GENENTECH (or its Material Sublicensee) promptly with IMMUNOGEN's good faith estimate of the right Fully Burdened Manufacturing Cost for manufacture and supply of such Clinical Materials. IMMUNOGEN's price to defend in patent office proceedings supply Clinical Materials to GENENTECH (or its Material Sublicensee) shall equal [*] of IMMUNOGEN'S Fully Burdened Manufacturing Cost for such Clinical Materials as inter partes reviews, post grant reviews and oppositionsapproved by GENENTECH (or its Material Sublicensee). Ultragenyx Nothing herein shall bear preclude GENENTECH from making its own arrangements for manufacture and supply of Clinical Materials on its own or with Third Parties, in exercise of its license rights under Section 2.1. GENENTECH hereby agrees that (a) it shall use the Clinical Materials in compliance with all costs applicable federal, state and local laws, and (b) it (as a matter of preparationcontract between itself and IMMUNOGEN) shall assume all liability for damages that may arise from the use, filing, prosecution storage and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice disposal of such determination within a period of time reasonably necessary Clinical Materials to allow Takeda the extent provided pursuant to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx Section 9 below. GENENTECH shall be given no later than sixty (60) days prior entitled to the final deadline for transfer Clinical Materials to any pending action Third Party under terms obligating such Third Party not to transfer or response that may be due with respect to use such Patent(s) Clinical Materials except in compliance with the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance foregoing clause (a) of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productthis Section 3.6.

Appears in 1 contract

Samples: License Agreement (Immunogen Inc)

CONFIDENTIAL TREATMENT REQUESTED. Certain information will indemnify Enumeral Indemnitees (as defined in this document the Agreement) against certain claims specified therein, including with respect to breaches of representations and warranties, as well as with respect to the development, commercialization, manufacture or use of any Product before or after Marketing Authorization (as such terms are defined in the Agreement). The Agreement also contains customary representations and warranties for both Enumeral and Pieris. The term of the Agreement ends upon the expiration of the last to expire patent covered under the license. The Agreement may be terminated by Pieris on 30 days’ notice and by Enumeral upon 60 days’ notice of a material breach by Pieris (or 30 days with respect to a breach of payment obligations by Pieris), provided that Pieris has not cured such breach and that dispute resolution procedures specified in the Agreement have been followed. The Agreement will also automatically terminate if Pieris elects to not make the maintenance fee payment described above. Portions of the exhibit, indicated by the xxxx “[***],” were omitted and have been filed separately with the Securities and Exchange CommissionCommission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. Confidential treatment CONFIDENTIAL TREATMENT REQUESTED Exhibit E Enumeral Press Release Enumeral and Pieris Pharmaceuticals Enter into License and Transfer Agreement CAMBRIDGE, Mass.—April 18, 2016—Enumeral Biomedical Holdings, Inc. (OTCQB: ENUM) (“Enumeral” or the “Company”), a biotechnology company focused on discovering and developing novel antibody-based immunotherapies to help the immune system fight cancer and other diseases, today announced that it has been requested entered into a License and Transfer Agreement (the “License Agreement”) with respect to omitted portions marked Pieris Pharmaceuticals, Inc. and Pieris Pharmaceuticals GmbH (collectively, ***Pieris. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx Pursuant to the terms and conditions of the License Agreement, Pieris is licensing from Enumeral specified intellectual property related to Enumeral’s anti-PD-1 antibody program ENUM 388D4 for the potential development and commercialization by Pieris of novel multispecific therapeutic proteins comprising fusion proteins based on Pieris’ Anticalins® class of therapeutic proteins and Enumeral antibodies in the field of oncology. Under the License Agreement, Pieris has agreed to pay Enumeral a $250,000 initial license fee, and Enumeral is providing Pieris with sequence and related information for Enumeral’s 388D4 family of anti-PD-1 antibodies. The License Agreement provides that Pieris may continue the license by paying Enumeral an additional maintenance fee in the amount of $750,000 by May 31, 2016. In the event that Pieris does not pay this maintenance fee by May 31, 2016, the License Agreement expires and the license granted thereunder automatically terminates. If Pieris elects to continue the license and pays Enumeral the maintenance fee, the License Agreement provides that Pieris shall bear all costs also receive an exclusive twelve-month option to license Enumeral intellectual property related to an additional antibody program on the same terms and conditions as for the ENUM 388D4 family of preparationanti-PD-1 antibodies (the “Subsequent Option”). The antibody subject to the Subsequent Option will be selected by Pieris from a specified list of antibodies owned by Enumeral. In the event that Pieris exercises the Subsequent Option, filingPieris will pay Enumeral an additional undisclosed license fee. The terms of the License Agreement provide for Pieris to pay Enumeral development milestones of up to an aggregate of $37.8 million upon the achievement of specified events, prosecution as well as net sales milestone payments of up to an aggregate of $67.5 million upon the achievement of specified net sales thresholds. Under the License Agreement, Pieris also agrees to pay Enumeral royalties in the low-to-lower middle single digits as a percentage of net sales depending on the amount of net sales in the applicable years. In the event that Pieris licenses an additional antibody pursuant to the Subsequent Option, any resulting fusion protein products will be subject to the same royalties and maintenance development and sales milestones applicable to the fusion proteins linking PD-1 and Anticalins under the initial license. Portions of Ultragenyx Pipeline Patentsthe exhibit, Ultragenyx Pipeline Improvement Patents, Ultragenyx indicated by the xxxx “[***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in ],” were omitted and have been filed separately with the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review Securities and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx shall be given no later than sixty (60) days prior Exchange Commission pursuant to the final deadline for any pending action or response that may be due with respect Registrant’s application requesting confidential treatment pursuant to such Patent(s) with the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling Rule 24b-2 of the preparationSecurities Exchange Act of 1934, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productas amended.

Appears in 1 contract

Samples: License and Transfer Agreement (Pieris Pharmaceuticals, Inc.)

CONFIDENTIAL TREATMENT REQUESTED. Certain information in this document has been omitted If Intellon were to pursue the recommended patent protection, then Intellon would be the sole owner of any and filed separately all resulting patents and would be entitled to all revenues derived by Intellon relating to the issued patent; provided, however, that Conexant would have a non-transferable, non-exclusive, royalty-free license (with the Securities and Exchange Commission. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis (including the no right to defend sublicense) under such patent within each relevant country to make, have made, use or sell products or processes utilizing or embodying the subject matter claimed in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territorypatent. During the Takeda Option Termprosecution of any applications filed pursuant to this Section, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity and prior to review and comment on material communications responding to Office Actions from any the patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents and drafts of any material filings or responses country, Intellon would agree to be made provide Conexant with timely copies of all correspondence and official papers related to the prosecution any such patent authorities in advance of submitting such filings or responsesapplication. Ultragenyx shall consider Takeda’s comments regarding such communications All expenses incurred pursuant to the drafting, filing and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice prosecution of such determination applications would be borne by Intellon. If Intellon were to decide not to pursue filing for patent protection as recommended by Conexant within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx shall be given no later than sixty (60) days of the date of Conexant's written recommendation, then Conexant could independently pursue patent protection in each such country on behalf of and for its sole benefit, and Conexant would bear all expenses therefor. If Conexant were to pursue patent protection in any such country, Conexant would be the sole owner of any and all resulting patents and would be entitled to all revenues derived by Conexant relating to the issued patent; provided, however, that Intellon would have a non-transferable, non-exclusive, royalty-free license (with no right to sub-license) under such patent within such country to make, have made, use or sell products or processes utilizing or embodying the subject matter claimed in such patent. During the prosecution of any applications filed pursuant to this Section, and prior to responding to Office Actions from the final deadline for patent authority of any pending action or response that may be due country, Conexant would agree to provide Intellon with respect timely copies of all correspondence and official papers related to the prosecution any such Patent(s) with patent application. All expenses incurred pursuant to the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s)drafting, Takeda shall have the right to pursue the filing or support the continued and prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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 would be made to such patent authorities in advance of submitting such filings or responses. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productborne by Conexant.

Appears in 1 contract

Samples: Comprehensive Agreement (Intellon Corp)

CONFIDENTIAL TREATMENT REQUESTED. Certain premature publication or dissemination of results of the activities hereunder. ImmunoGen agrees that, except as required by Applicable Laws, it shall not publish or present, or permit to be published or presented, the results of the Development, manufacture, use and Commercialization of a Licensed Product without the prior review by and approval of Millennium. Millennium shall provide to ImmunoGen the opportunity to review each of Millennium’s proposed abstracts, manuscripts or presentations (including, without limitation, information to be presented verbally) that contain ImmunoGen’s Confidential Information or disclose any unpatented Technology within the Licensed Intellectual Property at least [***] days prior to its intended presentation or submission for publication, and Millennium agrees, upon written request from ImmunoGen given within such [***]-day period, not to submit such abstract or manuscript for publication or to make such presentation until ImmunoGen is given up to [***] days [***] from the date of such written request to seek appropriate patent protection for any unpatented Technology disclosed in this document has such publication or presentation that it reasonably believes may be patentable. Once such abstracts, manuscripts or presentations have been reviewed and, where applicable, approved by each Party, the same abstracts, manuscripts or presentations do not have to be provided again to the other Party for review for a later submission for publication. Each Party also shall have the right to require that any of its Confidential Information that is disclosed in any such proposed publication or presentation be deleted prior to such publication or presentation. In any permitted publication or presentation by a Party, the other Party’s contribution shall be duly recognized, and co-authorship shall be determined in accordance with customary industry standards. ImmunoGen agrees that, except as required by Applicable Laws, it shall not publish or present, or permit to be published or presented, the results of the Development, manufacture, use or ImmunoGen/Millennium Confidential Portions of the exhibit, indicated by the xxxx “[***],” were omitted and have been filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint 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 with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx shall be given no later than sixty (60) days prior Commission pursuant to the final deadline for any pending action or response that may be due with respect Registrant’s application requesting confidential treatment pursuant to such Patent(s) with the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda shall have the right to pursue the filing or support the continued prosecution or maintenance of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling Rule 24b-2 of the preparationSecurities Exchange Act of 1934, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Productas amended.

Appears in 1 contract

Samples: Confidential Treatment Requested (Immunogen Inc)

CONFIDENTIAL TREATMENT REQUESTED. Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions). Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents and drafts of any material filings or responses to be Schedule 2 Form Lease Reference is made to such patent authorities in advance that certain Amended and Restated Master Lease Agreement dated as of submitting such filings July 25, 2012 (as amended, supplemented, modified, renewed or responses. Ultragenyx shall consider Takeda’s comments regarding such communications and drafts in good faith with a view replaced from time to maximizing time, the Patent protection and scope in the Territory“Master Lease Agreement”; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or capitalized terms used but not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within a period of time reasonably necessary to allow Takeda to determine, in its sole discretion, its interest in such Patent(s) (which notice by Ultragenyx 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 Takeda provides timely written notice expressing its interest in continuing to support such Patent(s), Takeda otherwise defined herein shall have the right meanings set forth in the Master Lease Agreement), between DB Energy Trading LLC (“Lessor”), as lessor, AGY Holding Corp. (“Lessee”), as lessee, AGY Aiken LLC, as guarantor and AGY Huntingdon LLC, as guarantor. In accordance with the Master Lease Agreement, Lessor hereby agrees to pursue lease to Lessee, and Lessee hereby agrees to lease from Lessor, Metals on the filing terms set forth in the Master Lease Agreement and the additional following terms (the “Lease”): Unit Identification/Serial Number : Metal Amount : Location : Commencement Date : Lease Expiration Date : CFM Lease/Yarns Lease : Lease Rent : Without limiting Lessee’s representations and warranties set forth in the Master Lease Agreement, Lessee represents and warrants to Lessor that, as of the date hereof, (a) no Default has occurred and is continuing under the Master Lease Agreement or support would result herefrom; (b) each of the continued prosecution or maintenance representations and warranties in the Master Lease Agreement is true and correct in all material respects as of the date hereof (except (i) to the extent that it expressly relates to another date, in which case it is true and correct in all material respects as of such Patents other date and Ultragenyx (ii) any representation and warranty that itself is qualified as to “materiality” or “Material Adverse Effect” shall provide be true and correct in all respects); and (c) as of the Commencement Date, the quantity of Metal referred to Takeda, subject in this Lease was computed in accordance with the various schedules to reimbursement the Master Lease Agreement and meets the purity and/or maximum level of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patents. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx a reasonable opportunity to review and comment on material communications from any patent authority contaminant criteria set forth 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 responsesschedules thereto. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling This Lease incorporates by reference all of the preparationterms, filingconditions, prosecution representations, warranties, covenants and maintenance obligations set forth in the Master Lease Agreement. Agreed and accepted: DB ENERGY TRADING LLC, AGY HOLDING CORP., as Lessor as Lessee By: By: Name: Name: Position: Position: CONFIDENTIAL TREATMENT REQUESTED Schedule 3 Inventory Unit Location of Patents covering such Ultragenyx Pipeline Product.Unit Metal Amount in Xxxx ounces of Platinum Metal Amount in Xxxx ounces of Rhodium Non-Lessor Metal CONFIDENTIAL TREATMENT REQUESTED Schedule 4 Platinum Pure Metal Standards [remainder of page intentionally left blank] CONFIDENTIAL TREATMENT REQUESTED Schedule 5 Rhodium Pure Metal Standards [remainder of page intentionally left blank] CONFIDENTIAL TREATMENT REQUESTED Schedule 6

Appears in 1 contract

Samples: Master Lease Agreement (AGY Holding Corp.)

CONFIDENTIAL TREATMENT REQUESTED. Certain information Strict compliance with the above requirements in this document has been omitted and filed separately with Addendum is a material term of the Securities and Exchange CommissionAgreement. Confidential treatment has been requested with respect to omitted portions marked “***”. on a worldwide basis (including Dell reserves the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions)terminate the Agreement based on any non-compliance with the terms of this Addendum. Ultragenyx shall bear all costs of preparation, filing, prosecution and maintenance of Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents in the Territory. During the Takeda Option Term, Ultragenyx, upon Takeda’s request, shall provide Takeda a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding Ultragenyx Pipeline Patents, Ultragenyx Pipeline Improvement Patents, Ultragenyx [***] Patents and, where relating to Ultragenyx Pipeline Products, Joint Patents and drafts of any material filings or responses The parties hereto have caused this Addendum to be made executed by their duly authorized representatives. Agreed and Accepted: Agreed and Accepted: DELL MARKETING, L.P. GLASSHOUSE TECHNOLOGIES, INC. By: By: Printed Name: Printed Name: Title: Title: CONFIDENTIAL TREATMENT REQUESTED Exhibit A to such patent authorities in advance Site Security Addendum Certification of submitting such filings or responses. Ultragenyx shall consider TakedaProvider’s comments regarding such communications Personnel, Agents, and drafts in good faith Subcontractors: Signed Certifications must be kept on record with a view to maximizing the Patent protection and scope in the Territory; provided that final decision making authority rests with Ultragenyx. During the Takeda Option Term, if Ultragenyx determines in its sole discretion to abandon or not maintain any Ultragenyx Pipeline Patent, Ultragenyx Pipeline Improvement Patent, Ultragenyx [***] Patent and, where relating to Ultragenyx Pipeline Products, Joint Patent that is being prosecuted or maintained by Ultragenyx in the Takeda Territory, then Ultragenyx shall provide Takeda with written notice of such determination within Provider’s Human Resources Department for a period of time reasonably necessary four years after the termination of the Agreement. My signature below confirms my acknowledgement that I have read the Site Security and Environmental, Health, and Safety Addendum; that I fully understand the requirements stated therein; and that I agree to allow Takeda comply with the requirements stated therein while on Dell property, Dell business, or any customer site. Printed Name: Signature: Date: Exhibit A-1 to determineSite Security Addendum Annual Certification of Provider’s Compliance: Signed Certifications must be kept on record with Provider’s Human Resources Department for a period of four years after the termination of the Agreement. My signature below confirms Provider’s acknowledgement of compliance with the Site Security and Environmental, in its sole discretionHealth, its interest in such Patent(sand Safety Addendum terms; that Provider fully understands the requirements stated therein; and that Provider agrees to comply with the requirements stated therein while any of Provider’s personnel, agents or subcontractors are at Dell or any customer site. Printed Name: Signature: Title: Date: Exhibit B to Site Security Addendum Confidentiality Agreement (insert name of Contractor or Subcontractor here) (“Contractor”) acknowledges that Provider has provided the undersigned with this Confidentiality Agreement and the undersigned has read and understands the terms of this Confidentiality Agreement. This Confidentiality Agreement applies to the following project (the “Project”): Confidentiality agreement is to be signed by ALL sub-contractors as they are not covered under Dell’s NDA. (Please delete these instructions upon execution). (insert description of Project here) By its signature below, the undersigned (the “Contractor”) agrees that: The Contractor is entering upon the Project, which notice is owned or leased by Ultragenyx Dell Inc. (or a subsidiary and/or affiliate of Dell Inc.) or is owned or leased by Dell’s Customer. Dell Inc. and/or each such subsidiary and/or affiliate of Dell Inc. and Dell’s Customer are referred to herein as an “Owner Party” and referred to collectively as the “Owner Parties.” The Contractor agrees that any and all information relating to the business of any Owner Party and all Owner Parties and all information relating to, belonging to, or pertaining to any product, supplier, creditor, customer or prospect of any Owner Party and all Owner Parties, including but not limited to, information relating to products, customer and prospect lists, concepts for marketing computer hardware and software, data processing, programming, software, documentation, research and development processes, inventions, services or the internal operations of any Owner Party and all Owner Parties or any supplier, creditor, customer or prospect of any Owner Party and all Owner Parties is and shall be given treated by the Contractor as confidential and proprietary at all times (including, without limitation, at all times after the Contractor is no later than sixty (60) days prior longer performing work or providing labor, material or other services at the Project). The Contractor agrees that, except for the purpose of any Owner Party’s right to enforce the final deadline for terms of this Confidentiality Agreement, this Confidentiality Agreement does not create any pending privity of contract between the Contractor and any Owner, and the Contractor hereby waives any and all claims, demands, suits and causes of action against any Owner Party and all Owner Parties and releases all Owner Parties from any liability, whether any such claim, demand, suit, cause of action or response that may be due with respect liability is known or unknown, present or future. In addition to such Patent(s) with the applicable patent authority). If Takeda provides timely written notice expressing its interest in continuing any other remedies available to support such Patent(s)any Owner Party, Takeda any Owner Party shall have the right to pursue seek equitable relief, including, without limitation, injunctive relief or specific performance, against the filing Contractor or support its representatives, employees or agents in order to enforce the continued prosecution or maintenance provisions of such Patents and Ultragenyx shall provide to Takeda, subject to reimbursement of Ultragenyx’s out- of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Takeda to take such action to establish or preserve any such Patentsthis Confidentiality Agreement. If Takeda pursues the filing or support of such Patents, it shall provide Ultragenyx 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. Takeda shall consider Takeda’s comments regarding such communications and drafts in good faith. Notwithstanding the foregoing, following the execution of an Exercised Product License Agreement covering an Ultragenyx Pipeline Product, the terms of such license agreement shall govern the handling of the preparation, filing, prosecution and maintenance of Patents covering such Ultragenyx Pipeline Product.Contractor By: (Signature) (Printed Name) Its: (Title) Date: SCHEDULE C INFORMATION PRIVACY AND SECURITY SCHEDULE ADDENDUM

Appears in 1 contract

Samples: Master Relationship Agreement (GlassHouse Technologies Inc)

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