Common use of Prosecution and Maintenance of Patent Rights Clause in Contracts

Prosecution and Maintenance of Patent Rights. (a) It is the intention of the parties to secure broad patent protection for discoveries and inventions made in connection with the Collaboration. SIGNAL shall be responsible for the filing, prosecution and maintenance of all SIGNAL Patent Rights and all patent applications and patents covering any inventions owned solely by SIGNAL under Section 7.1. DPM shall be responsible for the filing, prosecution and maintenance of all patent applications and patents covering any inventions owned solely by DPM under Section 7.1. Each party shall consider in good faith the requests and suggestions of the other party with respect to strategies for filing and prosecuting such patent applications. The inventing party shall keep the other party informed of progress with regard to the filing, prosecution, maintenance, enforcement and defense of patents applications and patents subject to this Section 7.2(a). (b) In the case of Collaboration Patent Rights, the parties shall agree on the allocation of responsibility for the preparation, filing, prosecution, and maintenance of any such Collaboration Patent Rights. The party controlling a Collaboration Patent Right shall consult with the other party as to the preparation, filing, prosecution, and maintenance of such Collaboration Patent Right reasonably prior to any deadline or action with the U.S. Patent & Trademark Office or any foreign patent office, and shall furnish to the other party copies of all relevant documents reasonably in advance of such consultation. In the event that the party controlling a Collaboration Patent Right desires to abandon such Collaboration Patent Right, or if the party assuming control of a Collaboration Patent Right later declines responsibility for such Collaboration Patent Right, the controlling party shall provide reasonable prior written notice to the other party of such intention to abandon or decline responsibility, and such other party shall have the right, at its expense, to prepare, file, prosecute, and maintain any Collaboration Patent Rights. The costs for the preparation, filing, prosecution and maintenance of Collaboration Patent Rights shall be shared on a 50/50 basis; however, neither party shall be subject to any internal costs for work done in-house by the other party. (c) Each party will promptly disclose to the other party such inventions arising from or made in the performance of the Research Project and any patent or patent applications claiming such inventions, to the extent that such inventions are necessary or useful to the Research Project or the rights licensed hereunder. (d) In no event will the Signal Patent Rights be abandoned without DPM first being given an opportunity to maintain such Signal Patent Rights. In the event that SIGNAL decides not to continue the prosecution or maintenance of a patent application or patent within the Signal Patent Rights in a country, SIGNAL shall provide DPM with prior written notice of this decision and cooperate with DPM so as to provide DPM reasonable opportunity to assume full responsibility for the continued prosecution or maintenance of such patent application or patent. In such event that SIGNAL desires to discontinue maintenance or prosecution of the Signal Patent Rights, SIGNAL agree to then assign such SIGNAL Patent Rights to DPM at no cost.

Prosecution and Maintenance of Patent Rights. (a) It is the intention of the parties to secure broad patent protection for discoveries and inventions made in connection with the Collaboration. SIGNAL Celgene shall be responsible for the filingresponsible, prosecution and maintenance of all SIGNAL Patent Rights and all patent applications and patents covering any inventions owned solely by SIGNAL under Section 7.1. DPM shall be responsible at its own expense, for the filing, prosecution and maintenance of all patent applications and patents covering any inventions owned solely by DPM under Section 7.1within the Celgene Patent Rights. Novartis shall be responsible, at its own expense, for the filing, prosecution and maintenance of all patent applications and patents within the Novartis Patent Rights. Each party Party shall consider in good faith the requests and suggestions of the other party Party with respect to strategies for filing filing, prosecuting and prosecuting maintaining such patent applicationsapplications and patents. The inventing party responsible Party shall keep the other party Party informed of progress with regard to the filing, prosecution, maintenance, enforcement and defense of patents applications and patents subject to this Section 7.2(a9.2(a). (b) In the case of Collaboration Patent Rights, the parties shall agree on the allocation of responsibility for the preparation, filing, prosecution, and maintenance of any such Collaboration Patent Rights. The party controlling a Collaboration Patent Right shall consult with the other party as to the preparation, filing, prosecution, and maintenance of such Collaboration Patent Right reasonably prior to any deadline or action with the U.S. Patent & Trademark Office or any foreign patent office, and shall furnish to the other party copies of all relevant documents reasonably in advance of such consultation. In the event that the party controlling a Collaboration Patent Right Celgene desires to abandon such Collaboration any patent application or patent within the Celgene Patent RightRights that claims a Celgene Invention, or if the party assuming control of a Collaboration Patent Right Celgene later declines responsibility for any such Collaboration Patent Rightpatent application or patent, the controlling party Celgene shall provide reasonable prior written notice to the other party Novartis of such intention to abandon or decline responsibility, and such other party Novartis shall have the right, at but not the obligation, as its own expense, to file, prosecute, and maintain such patent application or patent. (b) The Parties shall determine by mutual agreement which Party shall be responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights on a case by case basis. In the event that a party responsible for the filing, prosecution and maintenance of any patent application or patent within the Joint Patent Rights desires to abandon such patent application or patent, or if such Party later declines responsibility for such patent application or patent, such Party shall provide reasonable prior written notice to the other Party of its intention to abandon or decline responsibility, and the other Party shall have the right, but not the obligation, to prepare, file, prosecute, and maintain any Collaboration Patent Rights. The costs for the preparation, filing, prosecution and maintenance of Collaboration Patent Rights shall be shared on a 50/50 basis; however, neither party shall be subject to any internal costs for work done in-house by the other party. (c) Each party will promptly disclose to the other party such inventions arising from or made in the performance of the Research Project and any patent or patent applications claiming such inventions, to the extent that such inventions are necessary or useful to the Research Project or the rights licensed hereunder. (d) In no event will the Signal Patent Rights be abandoned without DPM first being given an opportunity to maintain such Signal Patent Rights. In the event that SIGNAL decides not to continue the prosecution or maintenance of a patent application or patent within the Signal Patent Rights in a country, SIGNAL shall provide DPM with prior written notice of this decision and cooperate with DPM so as to provide DPM reasonable opportunity to assume full responsibility for the continued prosecution or maintenance of such patent application or patent. In such event that SIGNAL desires to discontinue maintenance or prosecution of the Signal Joint Patent Rights. The Parties shall share equally the costs of filing, SIGNAL agree to then assign such SIGNAL prosecuting and maintaining patents or patent applications within the Joint Patent Rights to DPM at no costRights.

Prosecution and Maintenance of Patent Rights. (a) It is the intention of the parties to secure broad patent protection for discoveries and inventions made in connection with the Collaboration. SIGNAL GENEMEDICINE shall be responsible for the filingresponsible, prosecution and maintenance of all SIGNAL Patent Rights and all patent applications and patents covering any inventions owned solely by SIGNAL under Section 7.1. DPM shall be responsible at its own expense, for the filing, prosecution and maintenance of all patent applications and patents covering within the GENEMEDICINE Patent Rights and any inventions owned conceived of and reduced to practice in the course of the Collaborative Alliance during the Term solely by DPM under Section 7.1its employees and agents. BIOJECT shall be responsible, at its own expense, for the filing, prosecution and maintenance of all patent applications and patents within the BIOJECT Patent Rights and any inventions conceived of and reduced to practice in the course of the Collaborative Alliance during the Term solely by its employees and agents. Each party shall consider in good faith the requests and suggestions of the other party with respect to strategies for filing filing, prosecuting and prosecuting maintaining such patent applicationsapplications and patents. The inventing party shall keep the other party informed of progress with regard to the filing, prosecution, maintenance, enforcement and defense of patents applications and patents subject to this Section 7.2(a). (b) In the case of Collaboration Patent Rights, the parties shall agree on the allocation of responsibility for the preparation, filing, prosecution, and maintenance of any such Collaboration Patent Rights. The party controlling a Collaboration Patent Right shall consult with the other party as to the preparation, filing, prosecution, and maintenance of such Collaboration Patent Right reasonably prior to any deadline or action with the U.S. Patent & Trademark Office or any foreign patent office, and shall furnish to the other party copies of all relevant documents reasonably in advance of such consultation. In the event that the either party controlling a Collaboration Patent Right desires to abandon any patent application or patent within the Patent Rights of such Collaboration Patent Rightparty, or if the such party assuming control of a Collaboration Patent Right later declines responsibility for any such Collaboration Patent Rightpatent application or patent, the controlling such party shall provide reasonable prior written notice to the other party of such intention to abandon or decline responsibility, and such the other party shall have the right, at its own expense, to file, prosecute, and maintain such patent application or patent. (b) The Steering Committee shall determine which party shall be responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights on a case by case basis, with the understanding that it is the parties' intent that GENEMEDICINE will be responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights related to gene delivery and gene expression and BIOJECT will be responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights related to NFIDs. In the event that a party responsible for the filing, prosecution and maintenance of any patent application or patent within the Joint Patent Rights desires to abandon such patent application or patent, or if such party later declines responsibility for such patent application or patent, such party shall provide reasonable prior written notice to the other party of its intention to abandon or decline responsibility, and the other party shall have the right, but not the obligation, to prepare, file, prosecute, and maintain any Collaboration Patent Rights. The costs for the preparation, filing, prosecution and maintenance of Collaboration Patent Rights shall be shared on a 50/50 basis; however, neither party shall be subject to any internal costs for work done in-house by the other party. (c) Each party will promptly disclose to the other party such inventions arising from or made in the performance of the Research Project and any patent or patent applications claiming such inventions, to the extent that such inventions are necessary or useful to the Research Project or the rights licensed hereunder. (d) In no event will the Signal Patent Rights be abandoned without DPM first being given an opportunity to maintain such Signal Patent Rights. In the event that SIGNAL decides not to continue the prosecution or maintenance of a patent application or patent within the Signal Patent Rights in a country, SIGNAL shall provide DPM with prior written notice of this decision and cooperate with DPM so as to provide DPM reasonable opportunity to assume full responsibility for the continued prosecution or maintenance of such patent application or patent. In such event that SIGNAL desires to discontinue maintenance or prosecution of the Signal Joint Patent Rights. The parties shall share equally the costs of filing, SIGNAL agree to then assign such SIGNAL prosecuting and maintaining patents or patent applications within the Joint Patent Rights to DPM at no costRights.

Prosecution and Maintenance of Patent Rights. (a) It is Subject to the intention terms of the parties License and Collaboration Agreement with respect to secure broad patent protection for discoveries Licensed Products, Regeneron shall prepare, file, prosecute and inventions made maintain Patents and Patent Applications (as applicable) included in connection the Regeneron Patent Rights and Regeneron shall confer with and keep Sanofi reasonably informed regarding the Collaborationstatus of such activities to the extent they are Product Patent Rights. SIGNAL *********************************. (b) With respect to any Joint Patent Rights, the Parties shall be responsible for consult with each other regarding the filing, prosecution and maintenance of all SIGNAL any Patents and Patent Rights Applications, and all patent applications and patents covering any inventions owned solely by SIGNAL under Section 7.1. DPM responsibility for such activities shall be responsible for the obligation of Regeneron. Regeneron shall undertake such filings, prosecutions and maintenance in the names of both Parties as co-owners ***************************************. (c) The Parties shall have the following obligations with respect to the filing, prosecution and maintenance of all patent applications and patents covering any inventions owned solely by DPM under Section 7.1. Each party shall consider in good faith the requests and suggestions of the other party with respect to strategies for filing and prosecuting such patent applications. The inventing party shall keep the other party informed of progress with regard to the filing, prosecution, maintenance, enforcement and defense of patents applications and patents subject to this Section 7.2(a). (b) In the case of Collaboration Joint Patent Rights, as well as any Product Patent Rights: (i) the parties prosecuting Party (the “Prosecuting Party”) shall agree on provide the allocation other Party (the “Non-Prosecuting Party”) with notice and a copy of responsibility for a substantially completed draft of any Patent Application at least thirty (30) days prior to the preparation, filing, prosecution, and maintenance filing of any such Collaboration Patent Rights. The party controlling Application by the Prosecuting Party and incorporate all reasonable comments provided by the Non-Prosecuting Party within such thirty (30) day period unless the Prosecuting Party reasonably believes that such comments will adversely affect the scope or validity of the Patent Application or resulting Patent (it being understood that the Parties will discuss any points of disagreement and work to resolve disagreements during this thirty (30) day period); (ii) the Prosecuting Party shall notify the Non-Prosecuting Party prior to its filing of a Collaboration Patent Right Application; (iii) the Prosecuting Party shall consult with the other party as Non-Prosecuting Party promptly following the filing of the Patent Application to mutually determine in which countries it shall file convention Patent Applications; (iv) the Prosecuting Party shall provide the Non-Prosecuting Party promptly with copies of all material communications received from or filed in patent offices with respect to such applications and incorporate all reasonable comments provided by the Non-Prosecuting Party, unless the Prosecuting Party reasonably believes that such comments will adversely affect the validity or scope of the Patent Application or resulting Patent for both Parties; and (v) the Prosecuting Party shall provide the Non-Prosecuting 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, but in no event less than sixty (60) days prior to the preparation, filing, prosecution, and maintenance of such Collaboration Patent Right reasonably prior to next deadline for any deadline or action that may be taken with the U.S. Patent & Trademark Office or any foreign applicable patent office, and shall furnish (including but not limited to substantially narrowing or canceling any claim without reserving the other party copies right to file a continuing or divisional Patent Application, abandoning any Patent or not filing or perfecting the filing of all relevant documents reasonably any Patent Application in advance any country), with notice of such consultation. In the event proposed action or inaction so that the party controlling Non-Prosecuting Party has a Collaboration Patent Right desires reasonable opportunity to abandon review and make comments, and take such Collaboration Patent Rightactions as may be appropriate in the circumstances, or if including assuming the party assuming control of a Collaboration Patent Right later declines Prosecuting Party’s responsibility for such Collaboration Patent Right, the controlling party shall provide reasonable prior written notice to the other party of such intention to abandon or decline responsibility, and such other party shall have the right, at its expense, to prepare, file, prosecute, and maintain any Collaboration Patent Rights. The costs for the preparation, filing, prosecution and maintenance of Collaboration any such Product Patent Rights Right or Joint Patent Right and becoming the Prosecuting Party. With respect to Joint Inventions, it is understood that the Prosecuting Party and Non-Prosecuting Party shall use all reasonable efforts to reach agreement on all material filings and amendments and no such material filings or amendments shall be shared made by the Non-Prosecuting Party without the prior written agreement of the Non-Prosecuting Party, such agreement not to be unreasonably withheld or delayed. In addition, in the event that the Prosecuting Party materially breaches the foregoing obligations and such material breach is not cured within thirty (30) days of a written notice from the Non-Prosecuting Party describing such breach in reasonable detail, or in the event that the Prosecuting Party fails to undertake the filing of a Patent Application within the earlier of (i) ninety (90) days of a written request by the Non-Prosecuting Party to do so, and (ii) sixty (60) days prior to the anticipated filing date, the Non-Prosecuting Party may assume the Prosecuting Party’s responsibility for filing, prosecution and maintenance of any such Product Patent Right and will thereafter be deemed the Prosecuting Party for purposes hereof. Notwithstanding the foregoing, the Prosecuting Party may withdraw from or abandon any Patent or Patent Application on a 50/50 basis; however, neither party thirty (30) days’ prior notice to the Non-Prosecuting Party (provided that such notice shall be subject given no later than sixty (60) days prior to the next deadline for any internal costs for work done inaction that may be taken with respect to such Patent or Patent Application with the applicable patent office), providing the Non-house Prosecuting Party a free-of-charge option to assume the prosecution or maintenance thereof. The Parties will file and prosecute Patent Applications described in this Section 6.2(a) in the list of countries set forth in Exhibit B, unless otherwise agreed upon by the other party. (c) Each party will promptly disclose to the other party such inventions arising from or made in the performance of the Research Project and any patent or patent applications claiming such inventions, to the extent that such inventions are necessary or useful to the Research Project or the rights licensed hereunderParties. (d) In no event will All costs incurred in the Signal filing, prosecution and maintenance of any Joint Patent Rights and Product Patent Rights and in performing freedom to operate analyses on Program Targets or Lead Candidates shall be abandoned shared equally by the Parties. (e) Each Party shall have the right to invoke the Cooperative Research and Technology Enhancement Act of 2004, 35 U.S.C. 103(c)(2)-(c)(3) (the "CREATE Act") with respect to Joint Inventions, without DPM first being given an opportunity to maintain such Signal Patent Rightsthe prior written consent of the other Party. In the event that SIGNAL decides not a Party intends to continue invoke the prosecution CREATE Act, as permitted by the preceding sentence, it shall notify the other Party and the Parties shall reasonably cooperate and coordinate their activities with respect to any submissions, filings or maintenance other activities in support thereof. The Parties acknowledge and agree that this Agreement is a "joint research agreement" as defined in the CREATE Act. For the avoidance of a patent application doubt, nothing in this Section 6.2(e) shall amend or patent within modify the Signal Patent Rights determination of ownership of intellectual property as set forth in a country, SIGNAL shall provide DPM with prior written notice of this decision and cooperate with DPM so as to provide DPM reasonable opportunity to assume full responsibility for the continued prosecution or maintenance of such patent application or patent. In such event that SIGNAL desires to discontinue maintenance or prosecution of the Signal Patent Rights, SIGNAL agree to then assign such SIGNAL Patent Rights to DPM at no costSection 6.1.