Common use of Joint Patent Rights Clause in Contracts

Joint Patent Rights. With respect to any Joint Patent Rights, the Parties shall consult with each other regarding the filing, prosecution and maintenance of any Patents and Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance in the names of both Parties as co-owners. The Parties shall share all reasonable Out-Of-Pocket Costs (including legal fees and expenses) in accordance with the applicable Benefit Allocation with respect to such Joint Patent Rights in the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs (including legal fees and expenses) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations with respect to the filing, prosecution and maintenance of Patent Applications and Patents on any such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days after the filing of a Patent Application by the Controlling Party, (iii) the Controlling Party shall notify the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Party, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make comments, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty (30) days of a written notice from the non-Controlling Party to the Controlling Party describing such breach, or in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in the Novartis Territory, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant Joint Patent Right are not lost.

Joint Patent Rights. With respect In the event the Parties make any Joint Know-How, the Parties will promptly meet to discuss and determine, based on mutual consent, whether to seek patent protection thereon. Neither Party will file any Joint Patent Right without mutual consent. Unless otherwise agreed between the Parties, if the Parties decide to seek patent protection for any Joint Know-How: (i) BioNTech will have the first right, but not the obligation, to prepare, file, prosecute and maintain any Joint Patent Right predominantly relating to the RNA Technology or RNA Process Technology throughout the world, and (ii)Pfizer will have the first right, but not the obligation, to prepare, file, prosecute and maintain any other Joint Patent Right throughout the world, in each case of (i) and (ii) with the respective provisions of Section 7.3.1(a) or 7.3.1(b)(i) to apply mutatis mutandis except as provided in this Section 7.3.1(c). The non-filing Party will reimburse the filing Party for 50% of the costs reasonably incurred by the filing Party in preparing, filing, prosecuting and maintaining such Joint Patent Rights, which reimbursement will be made pursuant to, and within 75 days of, invoices (including supporting documentation) submitted by the filing Party to the non-filing Party no more often than once per Calendar Quarter. The non-prosecuting Party will cooperate with the prosecuting Party in taking reasonable measures to control costs and non-prosecuting Party shall be responsible for 100% of (x) any fees or costs related to any correspondence of outside counsel with or instructions to outside counsel by such Party (or any of such Party’s Representatives) which is independent of joint prosecution efforts, or (y) any patent office fees, and associated counsel/agent fees and costs, for extensions which are not incurred at the request of, and not due to the actions of, the prosecuting Party. If, once the Parties shall consult with each other regarding have agreed to prepare and file an application of Joint Patent Rights, either Party (the “Declining Party”) at any time thereafter declines to participate in the preparation, filing, prosecution and or maintenance of any Patents and Joint Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance Right or share in the names costs of both Parties as cofiling, prosecuting and maintaining any Joint Patent Right, on a country-owners. The Parties shall share all reasonable Outby-Of-Pocket Costs country basis, the Declining Party will provide the other Party (including legal fees and expensesthe “Continuing Party”) in accordance with the applicable Benefit Allocation with respect 30 days prior written notice to such Joint Patent Rights effect, in which event, the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs Declining Party will (including legal fees and expensesA) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations no responsibility with respect to the filing, prosecution and or maintenance of the applicable Joint Patent Applications and Patents on Right after the end of such 30 day period, (B) have no responsibility for any expenses incurred in connection with such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days Right after the filing end of a Patent Application by such 30 day period and (C) if the Controlling Continuing Party elects to continue filing, prosecution or maintenance, the Declining Party, (iii) upon the Controlling Party shall notify Continuing Party’s request, will execute such documents and perform such acts, at the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Continuing Party’s expense, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make comments, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty reasonably necessary (301) days of a written notice from the non-Controlling Party to assign to the Controlling Continuing Party describing such breachall of the Declining Party’s right, or title and interest in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in Right and (2) to permit the Novartis TerritoryContinuing Party to file, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant prosecute and maintain such Joint Patent Right are not lostat its sole expense. Where such Joint Patent Right is assigned to Pfizer as the Continuing Party, BioNTech will retain a non-exclusive, sublicensable, perpetual, irrevocable, royalty-free, fully paid-up worldwide right and license to practice and exploit such Patent Right for any and all purposes excluding, during the Term, in the Field in the Territory; and where such Joint Patent Right is assigned to BioNTech as the Continuing Party, it will be excluded from the definition of BioNTech Patent Rights, and Pfizer will retain a non-exclusive, sublicensable, perpetual, irrevocable, royalty-free, fully paid-up worldwide right and license to practice and exploit such Joint Patent Right for any and all purposes.

Joint Patent Rights. With respect In the event the Parties make any Joint Know-How, the Parties will promptly meet to discuss and determine, based on mutual consent, whether to seek patent protection thereon. Neither Party will file any Joint Patent Right without mutual consent. Unless otherwise agreed between the Parties, if the Parties decide to seek patent protection for any Joint Know-How: (a) BioNTech will have the first right, but not the obligation, to prepare, file, prosecute and maintain any Joint Patent Right predominantly relating to the RNA Technology or RNA Process Technology throughout the world, and (b) Pfizer will have the first right, but not the obligation, to prepare, file, prosecute and maintain any other Joint Patent Right throughout the world, in each case of (a) and (b) with the respective provisions of Section 10.3.1.1 to apply mutatis mutandis except as provided in this Section 10.3.2. The non-filing Party will reimburse the filing Party for 50% of the costs reasonably incurred by the filing Party in preparing, filing, prosecuting and maintaining such Joint Patent Rights, which reimbursement will be made pursuant to, and within 75 days of, invoices (including supporting documentation) submitted by the filing Party to the non-filing Party no more often than once per Pfizer Quarter. The non-prosecuting Party will cooperate with the prosecuting Party in taking reasonable measures to control costs and non-prosecuting Party shall be responsible for 100% of (x) any fees or costs related to any correspondence of outside counsel with or instructions to outside counsel by such Party (or any of such Party’s Representatives) which is independent of joint prosecution efforts, or (y) any patent office fees, and associated counsel/agent fees and costs, for extensions which are not incurred at the request of, and not due to the actions of, the prosecuting Party. If, once the Parties shall consult with each other regarding have agreed to prepare and file an application of Joint Patent Rights, either Party (the “Declining Party”) at any time thereafter declines to participate in the preparation, filing, prosecution and or maintenance of any Patents and Joint Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance Right or share in the names costs of both Parties as cofiling, prosecuting and maintaining any Joint Patent Right, on a country-owners. The Parties shall share all reasonable Outby-Of-Pocket Costs country basis, the Declining Party will provide the other Party (including legal fees and expensesthe “Continuing Party”) in accordance with the applicable Benefit Allocation with respect 30 days prior written notice to such Joint Patent Rights effect, in which event, the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs Declining Party will (including legal fees and expensesA) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations no responsibility with respect to the filing, prosecution and or maintenance of Patent Applications and Patents on any such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days after the filing of a Patent Application by the Controlling Party, (iii) the Controlling Party shall notify the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Party, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make comments, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty (30) days of a written notice from the non-Controlling Party to the Controlling Party describing such breach, or in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in the Novartis Territory, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant applicable Joint Patent Right are not lost.after the end of such 30 day period,

Joint Patent Rights. With respect Prior to either Party filing any Patent Right disclosing Joint Patent RightsProgram Technology, disclosing an Improvement made by ImmunoGen to CytomX Technology or disclosing an Improvement made by CytomX to the ImmunoGen Technology, the Parties shall consult establish a patent committee (the “Patent Committee”) comprised of at least one (1) representative of each Party for the purpose of facilitating communication as described in Sections 5.2.2 and 5.2.3 hereof and the preparation, filing, prosecution, maintenance and defense of Joint Patent Rights. As agreed upon by the Parties, meetings of the Patent Committee may be face-to-face or may be conducted by teleconferences or videoconferences, from time to time as needed. The Patent ***Certain information contained herein has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. Committee will be the forum through which the Parties coordinate their respective obligations to each other regarding described in Sections 5.2.2 and 5.2.3 hereof and in this Section. In the event the Parties conceive or generate any Joint Program Technology, the Parties shall promptly meet to discuss and determine, based on mutual consent, whether to seek patent protection thereon, which Party will control filing, prosecution and maintenance of such patents and how to pay for the filing, prosecution and maintenance of any Patents and Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Partypatents. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance in the names of both Parties as co-owners. The Parties shall share all reasonable Out-Of-Pocket Costs (including legal fees and expenses) in accordance with the applicable Benefit Allocation with respect to such Joint Patent Rights in the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs (including legal fees and expenses) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations with respect to the It is presumed that CytomX will control filing, prosecution and maintenance of Patent Applications and Patents on any such Joint Patent Rights: Rights claiming (ia) the Controlling Party shall permit the non-Controlling Party to review and comment at least two composition of matter or methods of use of CytomX Agreement PDCs or CytomX Licensed Products or (2b) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days after the filing of a Patent Application by the Controlling Party, (iii) the Controlling Party shall notify the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Party, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make commentsUnconjugated Probody Platform Improvements, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty (30) days of a written notice from the non-Controlling Party to the Controlling Party describing such breach, or in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for ImmunoGen will control filing, prosecution and maintenance of Joint Patent Rights claiming (i) composition of matter or methods of use of ImmunoGen Probodies, ImmunoGen Agreement PDCs or ImmunoGen Licensed Products, (ii) Conjugation Probody Platform Improvements or (iii) TAP Platform Improvements. Neither Party will file any Joint Patent Right without the prior written consent of the other Party, which consent shall not be unreasonably withheld, conditioned or delayed. The Party controlling filing and prosecution of any such Joint Patent Right (a) shall keep the other Party informed regarding each Patent Right, and will thereafter be deemed (b) shall consider in good faith any recommendations made by the Controlling other Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice in regard to the other Partyfiling, providing a free-of-charge option to assume the prosecution or maintenance thereof; of any such Patent Right and (c) shall not unreasonably refuse to incorporate any recommendations made by the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect other Party in regard to such Joint Patent Rights in the Novartis Territoryfiling, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant Joint Patent Right are not lostprosecution or maintenance.

Joint Patent Rights. With respect If the Parties make any Joint Know-How, the Parties shall promptly meet to discuss and determine whether to seek Joint Patent Rights thereon. If either Party decides to seek any Joint Patent Rights, the Parties shall consult with each other regarding the filing, prosecution and maintenance of any Patents and Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance in the names of both Parties as co-owners. The Parties shall share all reasonable Out-Of-Pocket Costs (including legal fees and expenses) in accordance with the applicable Benefit Allocation with respect to such Joint Patent Rights in the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs (including legal fees and expenses) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party then Sangamo shall have the following obligations first right, but not the obligation, to prepare, file, prosecute and maintain throughout the world, at its expense, any Joint Patent Right (other than a [***], the prosecution of which is governed by Subsection 10.2(a)) that claims the composition, manufacture or use of a ZF Compound or of a product or method containing, employing or made using a ZF Compound, using patent counsel or patent agent selected by Sangamo and reasonably acceptable to Shire. Shire shall have the first right, but not the obligation, to prepare, file, prosecute and maintain throughout the world, at its expense, any other Joint Patent Right (other than a [***], the prosecution of which is governed by Subsection 10.2(a)), using patent counsel or patent agent selected by Shire and reasonably acceptable to Sangamo. The prosecuting Party shall keep the non-prosecuting party informed as to material developments with respect to the filing, prosecution and maintenance of the Joint Patent Applications Rights, including by providing copies of all material communications (including office actions and Patents on notices of interferences, reissues, re-examinations or oppositions) from any patent office regarding such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review Rights and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days after the filing of a Patent Application by the Controlling Party, (iii) the Controlling Party shall notify the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies prosecuting party drafts of all communications received from submissions relating thereto, including drafts of any material filings or filed in patent offices with respect responses to be made to such filings; and (v) the Controlling Party shall provide patent offices, within a reasonable amount of time in advance of submitting such filings or responses to permit the non-Controlling Party, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable prosecuting party an opportunity to review and make commentscomment thereon. The prosecuting party shall consider in good faith, take into account and take such actions as may be appropriate in implement where possible the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty (30) days of a written notice from the non-Controlling Party to the Controlling Party describing such breach, or in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request reasonable comments made by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in the Novartis Territory, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant Joint Patent Right are not lostprosecuting party.

Joint Patent Rights. With respect Vivelix will have the first right to prepare, file, prosecute (including any interferences, reissue proceedings, cancellations, oppositions post grant review, patent term extension applications, reexaminations, and other similar proceedings) and maintain (the Party having such responsibility, the “Prosecuting Party”; the other Party, the “Non-Prosecuting Party”) any Patent Rights that Cover a Joint Invention (“Joint Patent Rights”), unless the Parties mutually agree that Idera will be the Prosecuting Party with respect to such Joint Patent Rights. If Vivelix does not file a patent application Covering such Joint Invention within the one hundred eighty (180) day period after either Party gives written notice to the other Party of such Joint Invention pursuant to Section 6.2.1, Idera shall have the right but not the obligation to become the Prosecuting Party with respect to such Joint Patent Rights upon written notice to Vivelix. The Prosecuting Party will reasonably consult with each the other regarding Party and will consider any comments from the other Party in good faith, with respect to the preparation, filing, prosecution and maintenance of such Joint Patent Rights. The Prosecuting Party will provide to such other Party copies of any papers relating to the filing, prosecution or maintenance of such Joint Patent Rights promptly upon their being filed or received, and will provide drafts of documents to be filed sufficiently in advance of their filing dates so as to provide the Non-Prosecuting Party with sufficient time to review and comment thereon prior to filing. The Non-Prosecuting Party may, from time to time, identify in writing to the Prosecuting Party certain countries in which the Non-Prosecuting Party desires that the Prosecuting Party file, prosecute and maintain Joint Patent Rights and the Prosecuting Party will, subject to Section 6.4.3, thereafter file, prosecute and maintain such Joint Patent Rights in such country or countries. The Prosecuting Party will not knowingly take any action during prosecution and maintenance of such Joint Patent Rights that would result in any reduction in the scope of one or more independent claims of such Licensed Patents, without the prior written consent of the Non-Prosecuting Party, which consent will not be unreasonably withheld, delayed or conditioned. The Parties will share equally all reasonable costs and expenses related to the preparation, filing, prosecution and maintenance of any Patents and Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance in the names of both Parties as co-owners. The Parties shall share all reasonable Out-Of-Pocket Costs (including legal fees and expenses) in accordance with the applicable Benefit Allocation with respect to such Joint Patent Rights in the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs (including legal fees and expenses) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations with respect to the filing, prosecution and maintenance of Patent Applications and Patents on any such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days after the filing of a Patent Application by the Controlling Party, (iii) the Controlling Party shall notify the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Party, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make comments, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty (30) days of a written notice from the non-Controlling Party to the Controlling Party describing such breach, or in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in the Novartis Territory, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant Joint Patent Right are not lost.

Joint Patent Rights. With respect In the event the Parties make any Joint Know-How, the Parties will promptly meet to discuss and determine, based on mutual consent, whether to seek patent protection thereon. Neither Party will file any Joint Patent Right without mutual consent. Unless otherwise agreed between the Parties, if the Parties decide to seek patent protection for any Joint Know-How: (a) BioNTech will have the first right, but not the obligation, to prepare, file, prosecute and maintain any Joint Patent Right predominantly relating to the RNA Technology or RNA Process Technology throughout the world, and (b) Pfizer will have the first right, but not the obligation, to prepare, file, prosecute and maintain any other Joint Patent Right throughout the world, in each case of (a) and (b) with the respective provisions of Section 10.3.1.1 to apply mutatis mutandis except as provided in this Section 10.3.2. The non-filing Party will reimburse the filing Party for 50% of the costs reasonably incurred by the filing Party in preparing, filing, prosecuting and maintaining such Joint Patent Rights, which reimbursement will be made pursuant to, and within 75 days of, invoices (including supporting documentation) submitted by the filing Party to the non-filing Party no more often than once per Pfizer Quarter. The non-prosecuting Party will cooperate with the prosecuting Party in taking reasonable measures to control costs and non-prosecuting Party shall be responsible for 100% of (x) any fees or costs related to any correspondence of outside counsel with or instructions to outside counsel by such Party (or any of such Party’s Representatives) which is independent of joint prosecution efforts, or (y) any patent office fees, and associated counsel/agent fees and costs, for extensions which are not incurred at the request of, and not due to the actions of, the prosecuting Party. If, once the Parties shall consult with each other regarding have agreed to prepare and file an application of Joint Patent Rights, either Party (the “Declining Party”) at any time thereafter declines to participate in the preparation, filing, prosecution and or maintenance of any Patents and Joint Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance Right or share in the names costs of both Parties as cofiling, prosecuting and maintaining any Joint Patent Right, on a country-owners. The Parties shall share all reasonable Outby-Of-Pocket Costs country basis, the Declining Party will provide the other Party (including legal fees and expensesthe “Continuing Party”) in accordance with the applicable Benefit Allocation with respect 30 days prior written notice to such Joint Patent Rights effect, in which event, the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs Declining Party will (including legal fees and expensesA) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations no responsibility with respect to the filing, prosecution and or maintenance of the applicable Joint Patent Applications and Patents on Right after the end of such 30 day period, (B) have no responsibility for any expenses incurred in connection with such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days Right after the filing end of a Patent Application by such 30 day period and (C) if the Controlling Continuing Party elects to continue filing, prosecution or maintenance, the Declining Party, (iii) upon the Controlling Party shall notify Continuing Party’s request, will execute such documents and perform such acts, at the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Continuing Party’s expense, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make comments, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty reasonably necessary (301) days of a written notice from the non-Controlling Party to assign to the Controlling Continuing Party describing such breachall of the Declining Party’s right, or title and interest in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in Right and (2) to permit the Novartis TerritoryContinuing Party to file, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant prosecute and maintain such Joint Patent Right are not lostat its sole expense. Where such Joint Patent Right is assigned to Pfizer as the Continuing Party, BioNTech will retain a non-exclusive, sublicensable, perpetual, irrevocable, royalty-free, fully paid-up worldwide right and license to practice and exploit such Patent Right for any and all purposes excluding, during the Term, in the Field; and where such Joint Patent Right is assigned to BioNTech as the Continuing Party, it will be excluded from the definition of BioNTech Patent Rights, and Pfizer will retain a non-exclusive, sublicensable, perpetual, irrevocable, royalty-free, fully paid-up worldwide right and license to practice and exploit such Joint Patent Right for any and all purposes.

Joint Patent Rights. With respect In the event the Parties make any Joint Know-How, the Parties will promptly meet to discuss and determine, based on mutual consent, whether to seek patent protection thereon. Neither Party will file any Joint Patent Right without mutual consent. Unless otherwise agreed between the Parties, if the Parties decide to seek patent protection for any Joint Know-How: (a) BioNTech will have the first right, but not the obligation, to prepare, file, Prosecute and Maintain any Joint Patent Right predominantly relating to the RNA Technology or RNA Process Technology throughout the world, and (b) Pfizer will have the first right, but not the obligation, to prepare, file, Prosecute and Maintain any other Joint Patent Right throughout the world, in each case of (a) and (b) with the respective provisions of Section 11.3.1.1 to apply mutatis mutandis except as provided in this Section 11.3.2. The non-filing Party will reimburse the filing Party for 50% of the costs reasonably incurred by the filing Party in preparing, filing, prosecuting and maintaining such Joint Patent Rights, which reimbursement will be made pursuant to, and within 75 days of, invoices (including supporting documentation) submitted by the filing Party to the non-filing Party no more often than once per Pfizer Quarter. The non-prosecuting Party will cooperate with the prosecuting Party in taking reasonable measures to control costs and non-prosecuting Party shall be responsible for 100% of (x) any fees or costs related to any correspondence of outside counsel with or instructions to outside counsel by such Party (or any of such Party’s Representatives) which is independent of joint prosecution efforts, or (y) any patent office fees, and associated counsel/agent fees and costs, for extensions which are not incurred at the request of, and not due to the actions of, the prosecuting Party. If, once the Parties shall consult with each other regarding have agreed to prepare and file an application of Joint Patent Rights, either Party (the “Declining Party”) at any time thereafter declines to participate in the preparation, filing, prosecution and or maintenance of any Patents and Joint Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance Right or share in the names costs of both Parties as cofiling, prosecuting and maintaining any Joint Patent Right, on a country-owners. The Parties shall share all reasonable Outby-Of-Pocket Costs country basis, the Declining Party will provide the other Party (including legal fees and expensesthe “Continuing Party”) in accordance with the applicable Benefit Allocation with respect 30 days prior written notice to such Joint Patent Rights effect, in which event, the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs Declining Party will (including legal fees and expensesA) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations no responsibility with respect to the filing, prosecution and or maintenance of the applicable Joint Patent Applications and Patents on Right after the end of such 30 day period, (B) have no responsibility for any expenses incurred in connection with such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days Right after the filing end of a Patent Application by such 30 day period and (C) if the Controlling Continuing Party elects to continue filing, prosecution or maintenance, the Declining Party, (iii) upon the Controlling Party shall notify Continuing Party’s request, will execute such documents and perform such acts, at the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Continuing Party’s expense, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make comments, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty reasonably necessary (301) days of a written notice from the non-Controlling Party to assign to the Controlling Continuing Party describing such breachall of the Declining Party’s right, or title and interest in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in Right and (2) to permit the Novartis TerritoryContinuing Party to file, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b) shall be shortened as may be required to ensure that rights in the relevant Prosecute and Maintain such Joint Patent Right are not lostat its sole expense. Where such Joint Patent Right is assigned to Pfizer as the Continuing Party, BioNTech will retain a non-exclusive, sublicensable, perpetual, irrevocable, royalty-free, fully paid-up worldwide right and license to practice and exploit such Patent Right for any and all purposes excluding, during the Term, in the Field; and where such Joint Patent Right is assigned to BioNTech as the Continuing Party, it will be excluded from the definition of BioNTech Patent Rights, and Pfizer will retain a non-exclusive, sublicensable, perpetual, irrevocable, royalty-free, fully paid-up worldwide right and license to practice and exploit such Joint Patent Right for any and all purposes.

Joint Patent Rights. With respect to any Joint Patent Rights, the Parties shall consult with each other regarding the filing, prosecution and maintenance of any Patents and Patent Applications, and responsibility for such activities shall be the obligation of the Controlling Party. If the The Controlling Party agrees to accept such responsibility, it shall undertake such filings, prosecutions and maintenance in the names of both Parties as co-owners. The Parties shall share all reasonable Out-Of-Pocket Costs (including legal fees and expenses) in accordance with the applicable Benefit Allocation with respect to such Joint Patent Rights in the Co-Commercialization Countries and the Co-Marketing Countries, and Novartis shall bear all Out-Of-Pocket Costs (including legal fees and expenses) with respect to such Joint Patent Rights in the Novartis Territory. The Controlling Party shall have the following obligations with respect to the filing, prosecution and maintenance of Patent Applications and Patents on any such Joint Patent Rights: (i) the Controlling Party shall permit the non-Controlling Party to review and comment at least two (2) weeks prior to the filing of any priority Patent Application by the Controlling Party; (ii) the Controlling Party shall notify the non-Controlling Party within thirty (30) days after the filing of a Patent Application by the Controlling Party, ; (iii) the Controlling Party shall notify the non-Controlling Party within eight (8) months from the filing of the priority Patent Application whether and in which countries it intends to file convention Patent Applications; (iv) the Controlling Party shall provide the non-Controlling Party promptly with copies of all communications received from or filed in patent offices with respect to such filings; and (v) the Controlling Party shall provide the non-Controlling Party, a reasonable time prior to taking or failing to take action that would affect the scope or validity of rights under any Patent Applications or Patents (including but not limited to substantially narrowing or canceling any claim without reserving the right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of any Patent Application in any country), with notice of such proposed action or inaction so that the non-Controlling Party has a reasonable opportunity to review and make comments, and take such actions as may be appropriate in the circumstances. In the event that the Controlling Party materially breaches the foregoing obligations and such breach is not cured within thirty (30) days of a written notice from the non-Controlling Party to the Controlling Party describing such breach, or in the event that the Controlling Party fails to undertake the filing of a Patent Application within ninety (90) days of a written request by the non-Controlling Party to do so, the non-Controlling Party may assume the Controlling Party's responsibility for filing, prosecution and maintenance of any such Joint Patent Right, and will thereafter be deemed the Controlling Party for purposes hereof. Notwithstanding the foregoing, the Controlling Party may withdraw from or abandon any Patent or Patent Application relating to any Joint Patent Rights on thirty (30) days days' prior notice to the other Party, providing a free-of-charge option to assume the prosecution or maintenance thereof; the Out-Of-Pocket Costs (including legal fees and expenses) for which, with respect to such Joint Patent Rights in the Novartis Territory, shall be shared equally. The Parties agree that any of the periods of time specified in this Section 10.2(b12.2(c) shall be shortened as may be required to ensure that rights in the relevant Joint Patent Right are not lost. All out-of-pocket costs incurred in the filing, prosecution and maintenance of any Joint Patent Rights shall be treated as a Shared Promotion Expense shared between the Parties as set forth in Section 9.2(c).