Common use of Patent Prosecution Clause in Contracts

Patent Prosecution. (a) [Reserved] (b) resTORbio will have the sole right to control Prosecution and Maintenance of all RAD001 Patents, BEZ235 Patents, and BEZ235/RAD001 Combination Patents (the “Licensed Patents”) at resTORbio’s expense, using counsel reasonably acceptable to Novartis. resTORbio will keep Novartis informed of important issues relating to the Prosecution and Maintenance of the Novartis Patents, and will furnish to Novartis copies of documents relevant to such Prosecution and Maintenance in sufficient time, but no later than 14 days, prior to the filing of such document to allow for review and comment by Novartis and resTORbio will reasonably consider all of such comments. Novartis will cooperate with and assist resTORbio in the Prosecution and Maintenance of the Novartis Patents including by (i) making its relevant scientists and scientific records reasonably available and (ii) signing and delivering (or using reasonable efforts to have signed and delivered), subject to reimbursement of out of pocket costs by resTORbio, all documents reasonably necessary in connection with such Prosecution and Maintenance. resTORbio will notify Novartis of any decision not to continue to pay the expenses of Prosecution and Maintenance of any Novartis Patent, which notice must be delivered at least sixty (60) days prior to any payment due date. In such event, Novartis, at its sole discretion and expense, shall have the right to continue Prosecution and Maintenance of such Novartis Patent in such country and, thereafter, such Novartis Patent shall no longer be considered a Novartis Patent licensed to resTORbio in such country. In the event that Novartis undertakes such Prosecution and Maintenance, resTORbio will provide Novartis all reasonable assistance and cooperation in relation thereto, including providing any necessary powers of attorney and any other required documents or instruments.

Patent Prosecution. 10.1 The filing and prosecution of the U.S. and foreign patent applications and maintenance of all U.S. and foreign patents within the WFUHS Patent Rights will be managed by WFUHS; provided, however, that, Tengion will have the reasonable right to comment upon the management, prosecution and maintenance of such patent application(s) and issued patents, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations of the JPC. Patent counsel for the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights shall be selected by WFUHS but shall be reasonably acceptable to Tengion (ait being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property). WFUHS will consult Tengion and will keep Tengion reasonably informed of all matters relating to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS will provide Tengion with copies of all material correspondence with the applicable patent office in such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights. 10.2 In the event Tengion determines that filing, prosecution or maintenance of any U.S. or foreign Improvement Patent or any patent or patent application relating to a Deferred Invention is not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) [Reserved] (b) resTORbio days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to control Prosecution delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other terms. 10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and Maintenance costs relating to the preparation, filing, prosecuting and maintenance of all RAD001 PatentsImprovement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24 10.4 If WFUHS, BEZ235 Patentsin its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and BEZ235/RAD001 Combination Patents (98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the “Licensed Patents”) filing, prosecution and maintenance of such application or patent at resTORbioTengion’s expense, using counsel reasonably acceptable but without any additional consideration payable to Novartis. resTORbio will keep Novartis informed of important issues relating to the Prosecution and Maintenance WFUHS, except reimbursement of the Novartis Patents, and will furnish to Novartis copies costs of documents relevant to such Prosecution and Maintenance in sufficient time, but no later than 14 days, prior to implementing the filing transfer of such document to allow for review rights and comment by Novartis and resTORbio will reasonably consider payment of all of such comments. Novartis will cooperate with and assist resTORbio in patent costs through the Prosecution and Maintenance effective date of the Novartis Patents including by (i) making its relevant scientists and scientific records reasonably available and (ii) signing and delivering (or using reasonable efforts to have signed and delivered), subject to reimbursement of out of pocket costs by resTORbio, all documents reasonably necessary transfer in connection accordance with such Prosecution and Maintenance. resTORbio will notify Novartis of any decision not to continue to pay the expenses of Prosecution and Maintenance of any Novartis Patent, which notice must be delivered at least sixty (60) days prior to any payment due date. In such event, Novartis, at its sole discretion and expense, shall have the right to continue Prosecution and Maintenance of such Novartis Patent in such country and, thereafter, such Novartis Patent shall no longer be considered a Novartis Patent licensed to resTORbio in such country. In the event that Novartis undertakes such Prosecution and Maintenance, resTORbio will provide Novartis all reasonable assistance and cooperation in relation thereto, including providing any necessary powers of attorney and any other required documents or instrumentsArticle 10.

Patent Prosecution. (a) [Reserved]Quark will be responsible for filing, prosecuting and maintaining the Quark Patents and any Joint Patents at its own cost and expense, through a Third Party law firm mutually agreed between the Parties. Novartis will fully cooperate with Quark in connection with the filing, prosecution and maintenance of the Quark Patents and any Joint Patents, including by providing access to relevant persons and executing all documentation reasonably requested by Quark. Quark will consult with Novartis and keep Novartis reasonably informed of the status of such Quark Patents and Joint Patents, it being understood and agreed that Quark shall make all decisions relating thereto. (b) resTORbio will have the sole right to control Prosecution and Maintenance of all RAD001 Patents, BEZ235 Patents, and BEZ235/RAD001 Combination Patents (the “Licensed Patents”) at resTORbio’s expense, using counsel reasonably acceptable to Novartis. resTORbio will keep Novartis informed of important issues relating to the Prosecution and Maintenance of the Novartis Patents, and will furnish to Novartis copies of documents relevant to such Prosecution and Maintenance in sufficient time, but no later than 14 days, prior to the filing of such document to allow for review and comment by Novartis and resTORbio will reasonably consider all of such comments. Novartis will cooperate with and assist resTORbio in the Prosecution and Maintenance of the Novartis Patents including by (i) making its relevant scientists and scientific records reasonably available and (ii) signing and delivering (or using reasonable efforts to have signed and delivered), subject to reimbursement of out of pocket costs by resTORbio, all documents reasonably necessary in connection with such Prosecution and Maintenance. resTORbio Quark will notify Novartis of its decision as to the countries of the world in which it elects to file, prosecute and maintain each Quark Patent and Joint Patent, and shall notify Novartis as to any decision to cease prosecution and/or maintenance of, or not to continue to pay the expenses of Prosecution and Maintenance of prosecution and/or maintenance of, any Novartis Patent, such Quark Patent or Joint Patent in any country in which notice must be delivered it was filed. Quark will provide such notices at least sixty (60) days [*] prior to any filing or payment due date, or any other due date that requires action, in connection with such Patent Right. In the event that Novartis wants to file patent applications in countries beyond those in which Quark decided to seek patent protection, or if Novartis wants to prosecute and maintain such eventQuark Patents or Joint Patents in countries where Quark has elected not to continue such prosecution or maintenance, Quark shall permit Novartis, at its sole discretion and expenseexpense but in the name of Quark (for Quark Patents) and in the name of Quark and Novartis jointly (for Joint Patents), to file or to continue prosecution or maintenance of such Quark Patent or Joint Patent. (c) In the event that any patent or patent application included in Quark Patents or Joint Patents is challenged by a Third Party, including opposition or reexamination, the Parties agree to cooperate with each other in the defense of such patent or patent application, with each of Quark and Novartis responsible for [*] of the cost associated with such defense. Notwithstanding the foregoing, the defense of any patent challenges filed (e.g. as a counterclaim) in connection with a infringement action brought under Section 10.3 shall be controlled by the Party bringing such infringement action. In the event Novartis is controlling the defense of a challenge to a Quark Patent by reason of this Section 10.2(c), Novartis shall meet and confer with Quark on a periodic basis to discuss such defense and shall consider in good faith any issues raised by Quark. (d) The Parties acknowledge that Quark shall have the right to continue Prosecution separate any claims of a Quark Patent that are specific to the [*] of a Quark Patent and Maintenance to file such claims in a separate patent application [*], including without limitation through the filing of one or more divisional applications at the request of Novartis pursuant to Section 6.8 of the Option Agreement. For the avoidance of doubt, any patent applications resulting from the foregoing process that do not claim any [*] (“[*] Patents”) shall be excluded from the definition of Quark Patents and Quark Technology for purposes of this Agreement and the Option Agreement. Quark shall keep Novartis reasonably informed of the status of such Novartis Patent in such country and[*] Patents, thereafter, such Novartis Patent it being understood and agreed that Quark shall no longer be considered a Novartis Patent licensed to resTORbio in such country. In the event that Novartis undertakes such Prosecution and Maintenance, resTORbio will provide Novartis make all reasonable assistance and cooperation in relation decisions relating thereto, including providing any necessary powers of attorney and any other required documents or instruments.

Patent Prosecution. (a) [Reserved]Novartis shall, in consultation with Enanta, be responsible for filing, prosecuting and maintaining the Enanta IP (in the name of Enanta) and Collaboration IP (in the name(s) of the owner(s) thereof as determined in accordance with Section 13.1(a)) at Novartis’ own cost and expense. Novartis shall use Commercially Reasonable Efforts to obtain appropriate patent protection with respect to claimed inventions that are supported by the relevant specification, whether or not relevant to Products being actually Developed or Commercialized by Novartis hereunder. Enanta shall fully cooperate with Novartis in connection with the filing, prosecution and maintenance of the Enanta IP and the Collaboration IP to the extent reasonably requested by Novartis, including by providing access to relevant persons and executing all documentation reasonably requested by Novartis. Novartis shall consult with Enanta and keep Enanta reasonably informed of the status of such Enanta IP and Collaboration IP, and provide copies of all relevant documents in a timely manner for Enanta’s review and comment, including any material reduction in scope, and will reasonably consider any Enanta comments in good faith, it being understood and agreed, however, that Novartis shall have the authority to make, in good faith, all final decisions relating thereto. Confidential materials omitted and filed separately with the Securities and Exchange Commission. Asterisks denote such omission. 32 (b) resTORbio will have the sole right to control Prosecution and Maintenance of all RAD001 Patents, BEZ235 Patents, and BEZ235/RAD001 Combination Patents (the “Licensed Patents”) at resTORbio’s expense, using counsel reasonably acceptable to Novartis. resTORbio will keep Novartis informed of important issues relating to the Prosecution and Maintenance of the Novartis Patents, and will furnish to Novartis copies of documents relevant to such Prosecution and Maintenance in sufficient time, but no later than 14 days, prior to the filing of such document to allow for review and comment by Novartis and resTORbio will reasonably consider all of such comments. Novartis will cooperate with and assist resTORbio in the Prosecution and Maintenance of the Novartis Patents including by (i) making its relevant scientists and scientific records reasonably available and (ii) signing and delivering (or using reasonable efforts to have signed and delivered), subject to reimbursement of out of pocket costs by resTORbio, all documents reasonably necessary in connection with such Prosecution and Maintenance. resTORbio will notify Novartis Enanta of any decision not to file applications for, or to cease prosecution and/or maintenance of, or not to continue to pay the expenses of Prosecution prosecution and/or maintenance of, any Enanta IP and Maintenance of Collaboration IP, including without limitation any decision to abandon any pending or issued claim in the Enanta IP or Collaboration IP. Novartis Patent, which will provide such notice must be delivered at least sixty thirty (6030) days prior to any relevant filing or payment due date, or any other due date that requires action, in connection with such Patent Right and/or claim. In such event, NovartisNovartis shall permit Enanta, at its sole discretion and expense, shall have the right to file or to continue Prosecution and Maintenance prosecution or maintenance of such Enanta IP or Collaboration IP, Novartis Patent shall fully cooperate with Enanta in such country andconnection with the filing, thereafter, such Novartis Patent shall no longer be considered a Novartis Patent licensed prosecution and maintenance of the Enanta IP and the Collaboration IP to resTORbio in such country. In the event that Novartis undertakes such Prosecution and Maintenance, resTORbio will provide Novartis all reasonable assistance and cooperation in relation theretoextent reasonably requested by Enanta, including by providing any necessary powers of attorney access to relevant persons and any other required documents or instrumentsexecuting all documentation reasonably requested by Enanta.

Patent Prosecution. Prothena and UHN will assume joint responsibility to control the preparing, filing, prosecuting, obtaining and maintaining the UHN Background IP, at Prothena’s sole cost and expense and using patent counsel acceptable to UHN (acting reasonably) during the Term. With input from UHN, Prothena shall continue to have the responsibility to control the preparing, filing, prosecuting, obtaining and maintaining the Foreground IP, at Prothena’s sole cost and expense and using patent counsel acceptable to UHN (acting reasonably) during the Term. For purposes of the UHN Background IP, UHN will provide Prothena with (a) [Reserved] (b) resTORbio will have the sole right to control Prosecution and Maintenance a copy of all RAD001 Patents, BEZ235 Patents, and BEZ235/RAD001 Combination Patents (the “Licensed Patents”) at resTORbio’s expense, using counsel reasonably acceptable to Novartis. resTORbio will keep Novartis informed of important issues relating any proposed document pertaining to the Prosecution and Maintenance of the Novartis Patents, and will furnish to Novartis copies of documents relevant to such Prosecution and Maintenance in sufficient time, but no later than 14 days, prior to the filing of such document to allow prosecution for review and comment by Novartis reasonably in advance of filing, and resTORbio (b) will reasonably consider all keep Prothena informed in a timely manner of the status of such comments. Novartis will cooperate with filing, prosecution and assist resTORbio in the Prosecution and Maintenance of the Novartis Patents maintenance, including by (i) making its relevant scientists and scientific records reasonably available by providing Prothena in a timely manner with copies of all material communications received from or filed in patent office(s) with respect to such UHN Background IP, and (ii) signing and delivering (by providing to Prothena, a reasonable time prior to taking or using reasonable efforts failing to have signed and delivered), subject to reimbursement of out of pocket costs by resTORbio, all documents reasonably necessary in connection with such Prosecution and Maintenance. resTORbio will notify Novartis take any action that would materially affect the scope or validity of any decision not such filing, prior written notice of such proposed action or inaction so that Prothena has a reasonable opportunity to continue to pay review and comment. For purposes of the expenses of Prosecution and Maintenance Foreground IP, Prothena (a) will provide UHN with a copy of any Novartis Patentproposed patent application constituting Foreground IP for review and comment reasonably in advance of filing, which notice must be delivered at least sixty and (60b) days will keep UHN informed in a timely manner of the status of such filing, prosecution and maintenance, including (i) by providing UHN in a timely manner with copies of all material communications received from or filed in patent office(s) with respect to such filing, and (ii) by providing to UHN, a reasonable time prior to taking or failing to take any payment due dateaction that would materially affect the scope or validity of any such filing, prior written notice of such proposed action or inaction so that UHN have a reasonable opportunity to review and comment. In such eventthe event that Prothena decides to (x) forego or cease prosecution, Novartisor (y) cease maintenance, at of any Patent or Patent Application within the UHN Background IP or Foreground IP in any jurisdiction, UHN may (in its sole discretion and expense, except to the extent such abandonment would reasonably benefit the prosecution or maintenance of the remaining Patents and Patent Applications within the UHN Background IP or Foreground IP) continue such prosecution or maintenance and Prothena shall have the right to continue Prosecution and Maintenance no further obligations in respect of such Novartis Patent or Patent Application in such country andjurisdiction, thereafter, and such Novartis Patent shall or Patent Application will no longer be considered a Novartis Patent licensed to resTORbio in such country. In Prothena as part of the event that Novartis undertakes such Prosecution and Maintenance, resTORbio will provide Novartis all reasonable assistance and cooperation in relation thereto, including providing any necessary powers of attorney and any other required documents or instrumentsLicensed Intellectual Property.

Patent Prosecution. (a) [Reserved]Novartis shall, in consultation with Enanta, be responsible for filing, prosecuting and maintaining the Enanta IP (in the name of Enanta) and Collaboration IP (in the name(s) of the owner(s) thereof as determined in accordance with Section 13.1(a)) at Novartis’ own cost and expense. Novartis shall use Commercially Reasonable Efforts to obtain appropriate patent protection with respect to claimed inventions that are supported by the relevant specification, whether or not relevant to Products being actually Developed or Commercialized by Novartis hereunder. Enanta shall fully cooperate with Novartis in connection with the filing, prosecution and maintenance of the Enanta IP and the Collaboration IP to the extent reasonably requested by Novartis, including by providing access to relevant persons and executing all documentation reasonably requested by Novartis. Novartis shall consult with Enanta and keep Enanta reasonably informed of the status of such Enanta IP and Collaboration IP, and provide copies of all relevant documents in a timely manner for Enanta’s review and comment, including any material reduction in scope, and will reasonably consider any Enanta comments in good faith, it being understood and agreed, however, that Novartis shall have the authority to make, in good faith, all final decisions relating thereto. (b) resTORbio will have the sole right to control Prosecution and Maintenance of all RAD001 Patents, BEZ235 Patents, and BEZ235/RAD001 Combination Patents (the “Licensed Patents”) at resTORbio’s expense, using counsel reasonably acceptable to Novartis. resTORbio will keep Novartis informed of important issues relating to the Prosecution and Maintenance of the Novartis Patents, and will furnish to Novartis copies of documents relevant to such Prosecution and Maintenance in sufficient time, but no later than 14 days, prior to the filing of such document to allow for review and comment by Novartis and resTORbio will reasonably consider all of such comments. Novartis will cooperate with and assist resTORbio in the Prosecution and Maintenance of the Novartis Patents including by (i) making its relevant scientists and scientific records reasonably available and (ii) signing and delivering (or using reasonable efforts to have signed and delivered), subject to reimbursement of out of pocket costs by resTORbio, all documents reasonably necessary in connection with such Prosecution and Maintenance. resTORbio will notify Novartis Enanta of any decision not to file applications for, or to cease prosecution and/or maintenance of, or not to continue to pay the expenses of Prosecution prosecution and/or maintenance of, any Enanta IP and Maintenance of Collaboration IP, including without limitation any decision to abandon any pending or issued claim in the Enanta IP or Collaboration IP. Novartis Patent, which will provide such notice must be delivered at least sixty thirty (6030) days prior to any relevant filing or payment due date, or any other due date that requires action, in connection with such Patent Right and/or claim. In such event, NovartisNovartis shall permit Enanta, at its sole discretion and expense, shall have the right to file or to continue Prosecution and Maintenance prosecution or maintenance of such Enanta IP or Collaboration IP, Novartis Patent shall fully cooperate with Enanta in such country andconnection with the filing, thereafter, such Novartis Patent shall no longer be considered a Novartis Patent licensed prosecution and maintenance of the Enanta IP and the Collaboration IP to resTORbio in such country. In the event that Novartis undertakes such Prosecution and Maintenance, resTORbio will provide Novartis all reasonable assistance and cooperation in relation theretoextent reasonably requested by Enanta, including by providing any necessary powers of attorney access to relevant persons and any other required documents or instrumentsexecuting all documentation reasonably requested by Enanta.