Common use of Program Patents Clause in Contracts

Program Patents. Arena shall be responsible for the preparation, filing, prosecution and maintenance of all Program Patents throughout the world. Arena shall keep Eisai informed of progress with regard to the preparation, filing, prosecution and maintenance of Program Patents throughout the world in a timely manner, but no less frequently than once per Calendar Quarter. To that end, Arena shall: (i) provide Eisai with a copy of the final draft of any proposed application for the Program Patents at least 30 days prior to filing the same in any country in the world, unless otherwise agreed by patent counsel for each Party, and Arena shall consider in good faith any comments or revisions suggested by Eisai or its counsel; (ii) promptly provide Eisai with a copy of each patent application as filed, together with a notice of its filing date and serial number; (iii) provide Eisai with a copy of any action, communication, letter, or other correspondence issued by the applicable patent office within at least 10 days of receipt thereof, and Arena shall consult with Eisai regarding responding to the same and shall consider in good faith any comments, strategies, and the like proposed by Eisai or its counsel; (iv) provide Eisai with a copy of any response, amendment, paper, or other correspondence filed with the applicable patent office within 10 days of Arena’s receipt of the as-filed document; and (v) promptly notify Eisai of the allowance, grant, or issuance of such Program Patents in any country in the world. If Arena elects to abandon or cease prosecution or maintenance of any Program Patent in any country in the world, Arena shall provide reasonable prior written notice to Eisai of such intention to abandon (which notice shall, to the extent possible, be given no later than 90 calendar days prior to the next deadline for any action that must be taken with respect to any such Program Patent in the relevant patent office). In such case, at Eisai’s sole discretion, upon written notice to Arena, Eisai may elect to continue prosecution or maintenance of any such Program Patent, and Arena shall take such actions, at Arena’s expense, as may be reasonably necessary to enable Eisai to do so. The reasonable and documented costs and expenses of preparing, filing, prosecuting and maintaining the Program Patents (A) in the Territory, shall be shared equally by the Parties and (B) in any country outside the Territory, shall be borne 80% by Arena and 20% by Eisai. Notwithstanding the above, either Party may decline to pay its share of the costs and expenses for preparing, filing, prosecuting and maintaining any Program Patents in a particular country or particular countries, in which case, at the other Party’s request, the declining Party shall assign, and shall cause its Affiliates to assign, to the other Party all of its and their right, title, and interest in and to any such Program Patent in the relevant country or countries whereupon such Program Patent shall cease to be a Program Patent and shall become either an Arena Patent or else a Patent owned solely by Eisai in such country or countries, as the case may be; provided, that, if a Program Patent becomes a Patent owned solely by Eisai in such country or countries, Eisai hereby grants to Arena a non-exclusive, royalty-free, fully-paid, irrevocable, perpetual, worldwide license, with the right to grant multiple tiers of sublicenses, under such Patent to research, develop, manufacture, use, import, offer for sale, sell, or conduct any other similar activities related to the commercial sale of, Products or other Compound Compounds or Related Products (subject to the rights granted to Eisai in the Territory hereunder).

Program Patents. Arena shall be responsible for the preparation, filing, prosecution and maintenance of all Program Patents throughout the world. Arena shall keep Eisai informed of progress with regard to the preparation, filing, prosecution and maintenance of Program Patents throughout the world in a timely manner, but no less frequently than once per Calendar Quarter. To that end, Arena shall: (i) provide Eisai with a copy of the final draft of any proposed application for the Program Patents at least 30 days prior to filing the same in any country in the world, unless otherwise agreed by patent counsel for each Party, and Arena shall consider in good faith any comments or revisions suggested by Eisai or its counsel; (ii) promptly provide Eisai with a copy of each patent application as filed, together with a notice of its filing date and serial number; (iii) provide Eisai with a copy of any action, communication, letter, or other correspondence issued by the applicable patent office within at least 10 days of receipt thereof, and Arena shall consult with Eisai regarding responding to the same and shall consider in good faith any comments, strategies, and the like proposed by Eisai or its counsel; (iv) provide Eisai with a copy of any response, amendment, paper, or other correspondence filed with the applicable patent office within 10 days of Arena’s receipt of the as-filed document; and (v) promptly notify Eisai of the allowance, grant, or issuance of such Program Patents in any country in the world. If Arena elects to abandon or cease prosecution or maintenance of any Program Patent in any country in the world, Arena shall provide reasonable prior written notice to Eisai of such intention to abandon (which notice shall, to the extent possible, be given no later than 90 calendar days prior to the next deadline for any action that must be taken with respect to any such Program Patent in the relevant patent office). In such case, at Eisai’s sole discretion, upon written notice to Arena, Eisai may elect to continue prosecution or maintenance of any such Program Patent, and Arena shall take such actions, at Arena’s expense, as may be reasonably necessary to enable Eisai to do so. The reasonable and documented costs and expenses of preparing, filing, prosecuting and maintaining the Program Patents (A) in the Territory, shall be shared equally by the Parties and (B) in any country outside the Territory, shall be borne 80% by Arena and 20% by Eisai. Notwithstanding the above, either Party may decline to pay its share of the costs and expenses for preparing, filing, prosecuting and maintaining any Program Patents in a particular country or particular countries, in which case, at the other Party’s request, the declining Party shall assign, and shall cause its Affiliates to assign, to the other Party all of its and their right, title, and interest in and to any such Program Patent in the relevant country or countries whereupon such Program Patent shall cease to be a Program Patent and shall become either an Arena Patent or else a Patent owned solely by Eisai in such country or countries, as the case may be; provided, that, if a Program Patent becomes a Patent owned solely by Eisai in such country or countries, Eisai hereby grants to Arena a non-exclusive, royalty-free, fully-paid, irrevocable, perpetual, worldwide license, with the right to grant multiple tiers of sublicenses, under such Patent to research, develop, manufacture, use, import, offer for sale, sell, or conduct any other similar activities related to the commercial sale of, Products or other Compound Compounds or Related Products (subject to the rights granted to Eisai in the Territory hereunder).in