Prosecution and Maintenance of Patents. (a) Arbutus shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus Patents, post-grant review and similar proceedings. Arbutus shall notify Gritstone of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and provide Gritstone with copies of all material filings or responses to be made to the patent authorities with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by Gritstone. Gritstone shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposals. (b) Gritstone shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings. (c) Subject to Section 6.2(d), [***], by counsel it selects to whom [***] has no reasonable objection, in consultation with [***], shall be responsible for the preparation, filing, prosecution and maintenance of the Patents Covering Joint IP in the countries selected by [***] in consultation with [***]. [***] shall provide [***] with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities. (d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and [***] shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof. (e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties. (f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.
Appears in 2 contracts
Sources: License Agreement (Gritstone Oncology, Inc.), License Agreement (Gritstone Oncology, Inc.)
Prosecution and Maintenance of Patents. (a) Arbutus shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus Patents, post-grant review and similar proceedings. Arbutus shall notify Gritstone of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and provide Gritstone with copies of all material filings or responses to be made to the patent authorities with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by Gritstone. Gritstone shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposals.
(b) Gritstone shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings.
(c) Subject to Section 6.2(d), [***], by counsel it selects to whom [***] has no reasonable objection, in consultation with [***], 9.1.1 XOMA shall be responsible for and shall control the preparation, Prosecution and Maintenance of the XMet Patents. XOMA shall give AntriaBio an opportunity to review and comment on the text of each patent application within the Licensed Patents before filing, prosecution and maintenance shall provide AntriaBio with a copy of such patent application as filed, together with notice of its filing date and serial number. AntriaBio shall reimburse XOMA for [*]of all [*] incurred by XOMA in conducting the Prosecution and Maintenance of the XMet Patents, and shall pay XOMA’s invoices therefor with thirty (30) days of receipt thereof.
9.1.2 If XOMA elects not to file any patent application within the Licensed Patents Covering Joint IP in or otherwise abandon the countries selected by [***] in consultation with [***]. [***] Prosecution and Maintenance of any patent application or patent within the Licensed Patents, then (a) XOMA shall provide [***] AntriaBio with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities.
decision so as to permit AntriaBio to decide whether to assume such responsibilities (d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any eventto the extent reasonably feasible for XOMA, be given no later than [***] thirty (30) days prior to the next deadline for to take any necessary action that with the relevant patent office); and (b) AntriaBio shall have the right but not the obligation to control the Prosecution and Maintenance of such patent application or patent, at AntriaBio’s sole cost. [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended.
9.1.3 AntriaBio may be taken elect, with respect to a particular Licensed Patent in a country to terminate its payment obligations hereunder with respect to such Patents Licensed Patent in such country by written notice given to XOMA, to the extent reasonably feasible for AntriaBio, no later than thirty (30) days prior to the next deadline to take any necessary action with the applicable relevant patent officeoffice with respect to such Licensed Patent. In such event, such Licensed Patent (and all Patents issuing therefrom) shall thereafter be excluded from the license granted to AntriaBio pursuant to Section 3.1 and [***] shall have no longer be deemed to be Licensed Patents hereunder.
9.1.4 Commencing on the rightfifth (5th) anniversary of the Effective Date, but AntriaBio may elect by written notice to terminate its payment obligations under Section 9.1.1 solely with respect to those XMet Patents that are not Licensed Patents. AntriaBio acknowledges that its agreement to reimburse the obligation, costs of such XMet Patents in accordance with Section 9.1.1 prior to assume, at its expense, responsibility the 5th anniversary of the Effective Date is a material portion of the consideration to be paid by AntriaBio for the prosecution and maintenance thereofrights granted hereunder.
(e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties.
(f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.
Appears in 2 contracts
Sources: License Agreement (Rezolute, Inc.), License Agreement
Prosecution and Maintenance of Patents. (a) Arbutus Subject to any Adolor third party agreements, Adolor shall prepare, file prosecute and maintain in the Territory and at its own costs, upon consultation with Santen, the Adolor Patents and any jointly owned patents. Adolor shall notify Santen of the status of all patent filings (including, without limitation, the grant of any Adolor Patents) and, upon the request of Santen, shall provide advance copies of any papers relating to the filing, prosecution, or maintenance of such Adolor Patents. For Adolor Patents and patent applications, and for jointly owned patents and patent applications, Santen shall reimburse Adolor for one-half of any and all costs for the filing, prosecution, or maintenance of such patents and patent applications incurred by Adolor. Adolor shall submit an invoice for reimbursement of such patent costs to Santen and Santen shall pay such invoice within thirty (30) days of submission by Adolor. Santen shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus Patents, post-grant review and similar proceedings. Arbutus shall notify Gritstone of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and provide Gritstone with copies of all material filings or responses to be made to audit the patent authorities with respect costs subject to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow reimbursement once per year. Such audit rights shall expire twenty- four (24) months after an invoice is submitted by Adolor for review and comment by Gritstone. Gritstone shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposalspayment.
(b) Gritstone shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings.
(c) Subject to Section 6.2(d8.04 (b), [all amounts for patent applications paid by Santen under Section 8.02
(a) for each country of the Territory shall be creditable on a country-by-country basis against future Royalties payable to Adolor by Santen for each such country; provided, however, that no more than ***]% of the Royalties payable for any period in such country shall be paid by crediting amounts paid by Santen under Section 8.02(a), by counsel it selects to whom [and further ***] =Certain information on this page has no reasonable objection, in consultation been omitted and filed separately with [***], shall be responsible for the preparation, filing, prosecution and maintenance of the Patents Covering Joint IP in the countries selected by [***] in consultation with [***]Commission. [***] shall provide [***] with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory Confidential treatment has been requested with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Daysomitted portions. [***] shall confer with and keep [***] reasonably informed regarding the status of provided that Santen may carry forward all amounts paid under Section 8.02(a) for crediting against future Royalties in such activitiescountry under this Section 8.02(b) until such amounts are exhausted.
(d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and [***] shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof.
(e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties.
(f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.
Appears in 2 contracts
Sources: Development and License Agreement (Adolor Corp), Development and License Agreement (Adolor Corp)
Prosecution and Maintenance of Patents. 17.1 Patents applied for as of the Commencement Date
17.2 Patents applied for after the Commencement Date
(a) Arbutus shall have the sole right and responsibility, If ACADIA requires any Neuren Improvement or Joint Improvement patent to be applied for in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection any country in the Territory for Arbutus PatentsTerritory, post-grant review ACADIA will notify Neuren of this, and similar proceedingsNeuren must notify ACADIA within […***…] days of such a request whether or not Neuren will file the patent application in some or all of the requested countries. Arbutus shall notify Gritstone If Neuren elects to file the patent application, Neuren will promptly file the patent application in those countries that ACADIA requests, and take all actions necessary to achieve registration of those patents in a timely manner, provided however that:
(i) all material developments and all significant actions to be taken costs in connection with applying for, prosecuting and registering such patent applications and maintaining the Arbutus Patents any patents that Cover any Product and provide Gritstone with copies of issue thereon must be borne by N▇▇▇▇▇; and
(ii) ACADIA acknowledges that all material filings or responses to such patent applications will be made to in the patent authorities with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by Gritstone. Gritstone shall offer its comments name of Neuren or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposalsan Affiliate of Neuren.
(b) Gritstone shall Once such patent applications have the sole right and responsibilitybeen filed, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is they will automatically form part of the Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedingsPatents licensed to ACADIA by Neuren under this Agreement.
(c) Subject If Neuren elects not to Section 6.2(d), [***], by counsel it selects to whom [***] has no reasonable objection, file for such patent application in consultation with [***], shall be responsible for the preparation, filing, prosecution and maintenance of the Patents Covering Joint IP in the countries selected by [***] in consultation with [***]. [***] shall provide [***] with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities.
(d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents any country in the Territory, [***] Neuren shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and [***] shall have the right, but not the obligation, to assume, at promptly assign its expense, responsibility for the prosecution and maintenance thereof.
(e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred interest in the preparationNeuren Improvement or Joint Improvement and any rights to file for such patent applications to ACADIA and ACADIA may itself apply for, filing, prosecution prosecute and maintenance of register those patent applications and maintain any Patent patents that Covers Joint IP issue thereon in such country in the Territory at its own cost and in its own name and ACADIA will own any and all rights therein (and the foregoing shall no longer be shared equally by the Partiesincluded in Neuren Improvements or Joint Improvements, as applicable).
(f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, 17.3 Obligations in each case without the other Party’s prior written consent.respect of Patents
Appears in 1 contract
Prosecution and Maintenance of Patents. (a) Arbutus shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus Patents, or any Patents that are part of the Arbutus Improvement IP and the Arbutus IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings. Arbutus shall will notify Gritstone Alexion of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and provide Gritstone Alexion with copies of all material filings or responses to be made to the patent authorities with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by GritstoneAlexion. Gritstone shall Alexion will offer its comments or proposals, if any, promptly, and Arbutus shall will not unreasonably reject any such comments and proposals.
(b) Gritstone Alexion shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone IP, or Product Alexion IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings.
(c) Subject to Section 6.2(d), [***]Alexion, by counsel it selects to whom [***] Arbutus has no reasonable objection, in consultation with [***]Arbutus, shall be responsible for the preparation, filing, prosecution and maintenance of the Patents Covering Joint IP in the countries selected by [***] Alexion in consultation with [***]Arbutus. [***] Alexion shall provide [***] Arbutus with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] 10 Business Days. [***] Alexion shall confer with and keep [***] Arbutus reasonably informed regarding the status of such activities.
(d) In the event that [***] Alexion desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] Alexion shall provide reasonable prior written notice to [***] Arbutus of such intention (which notice shall, in any event, be given no later than [***] thirty (30) days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and [***] Arbutus shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof.
(e) Except as provided in Section 6.2(dsubsection (d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties.
(f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.
Appears in 1 contract
Prosecution and Maintenance of Patents. (a) Arbutus shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus Patents, post-grant review and similar proceedings. Arbutus shall notify Gritstone of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and provide Gritstone with copies of all material filings or responses to be made to the patent authorities with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by Gritstone. Gritstone shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposals.
(b) Gritstone shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings.
(c) Subject to Section 6.2(d), [***], by counsel it selects to whom [***] has no reasonable objection, in consultation with [***], 9.1.1 XOMA shall be responsible for and shall control the preparation, Prosecution and Maintenance of the XMet Patents. XOMA shall give AntriaBio an opportunity to review and comment on the text of each patent application within the Licensed Patents before filing, prosecution and maintenance shall provide AntriaBio with a copy of such patent application as filed, together with notice of its filing date and serial number. AntriaBio shall reimburse XOMA for [*] of all [*] incurred by XOMA in conducting the Prosecution and Maintenance of the XMet Patents, and shall pay XOMA’s invoices therefor with thirty (30) days of receipt thereof.
9.1.2 If XOMA elects not to file any patent application within the Licensed Patents Covering Joint IP in or otherwise abandon the countries selected by [***] in consultation with [***]. [***] Prosecution and Maintenance of any patent application or patent within the Licensed Patents, then (a) XOMA shall provide [***] AntriaBio with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities.
decision so as to permit AntriaBio to decide whether to assume such responsibilities (d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any eventto the extent reasonably feasible for XOMA, be given no later than [***] thirty (30) days prior to the next deadline for to take any necessary action that with the relevant patent office); and (b) AntriaBio shall have the right but not the obligation to control the Prosecution and Maintenance of such patent application or patent, at AntriaBio’s sole cost.
9.1.3 AntriaBio may be taken elect, with respect to a particular Licensed Patent in a country to terminate its payment obligations hereunder with respect to such Patents Licensed Patent in such country by written notice given to XOMA, to the extent reasonably feasible for AntriaBio, no later than thirty (30) days prior to the next deadline to take any necessary action with the applicable relevant patent officeoffice with respect to such Licensed Patent. In such event, such Licensed Patent (and all Patents issuing therefrom) shall thereafter be excluded from the license granted to AntriaBio pursuant to Section 3.1 and [***] shall have the right, but not the obligation, no longer be deemed to assume, at its expense, responsibility for the prosecution and maintenance thereofbe Licensed Patents hereunder.
(e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties.
(f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.
Appears in 1 contract
Sources: License Agreement (XOMA Corp)
Prosecution and Maintenance of Patents. (a) Arbutus Genevant shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus PatentsGenevant Patents (and any Patent within Genevant IP), including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings. Arbutus Genevant shall (i) use reasonable efforts to notify Gritstone of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Genevant Patents that Cover cover any Genevant LNP that, to Genevant’s knowledge, is included in any Product and (ii) provide Gritstone with copies of all material filings or responses to be made to the patent authorities updates with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by Gritstone. Gritstone shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposalsthe foregoing upon ▇▇▇▇▇▇▇▇▇’s reasonable request.
(b) Gritstone shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the within Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings.
(c) Subject to Section 6.2(d), [***], by counsel it selects and to whom [***] has no reasonable objectionconsents (such consent not to be unreasonably withheld, in consultation with [***]delayed or conditioned), shall be responsible for the preparation, filing, prosecution and maintenance of the Joint Patents Covering Joint IP in the countries selected by [***] in consultation with [***]. [***] shall provide [***] with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days]. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities.
(d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the any Joint Patents Patent anywhere in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Patents Joint Patent with the applicable patent office) and [***] shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof. In the event that [***] desires to abandon its interest in any Joint Patent anywhere in the Territory, (i) [***] shall provide written notice to [***] and shall thereupon cease to have any cost-sharing obligation in respect thereof and (ii) such Joint Patent shall thereupon become [***].
(e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Joint Patent that Covers Joint IP in the Territory shall be shared equally by the Parties.
(f) Notwithstanding anything in this Agreement to the foregoingcontrary, (i) Arbutus Genevant shall not file a patent application Patent that includes any claims directed to any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.and
Appears in 1 contract
Sources: Nonexclusive License and Development Agreement (Gritstone Bio, Inc.)
Prosecution and Maintenance of Patents. (a) Arbutus The Company shall have the sole right and responsibility, in its sole discretion and responsibility at its sole cost and expenseexpense with input from Arbutus, to file, prosecute, maintain or abandon patent protection protection, post-grant review, inter partes review, or opposition proceedings and any similar patent office proceedings in the Territory and all appeals of any decisions rendered with respect to any such IPRs, post-grant review, opposition proceedings, administrative proceedings, and any similar patent office proceedings in the Territory for the Arbutus Patents (subject to Section 5.2(b), in the case of the Royalty Patents) and Patents Covering Joint IP (if any), post-grant review exclusive of the Arbutus Controlled Patent. Prosecution rights and similar proceedingsobligations for the Arbutus Controlled Patent are set forth in Section 5.2(d). The Company shall diligently prosecute the Arbutus Patents (subject to Section 5.2(b), in the case of the Royalty Patents) and Patents Covering Joint IP claims in the broadest manner most reasonably possible, subject to applicable laws in the Territory and the efforts of the Company to Research, Develop, Manufacture and Commercialize the Product(s) and Arbutus to Research, Develop, Manufacture and Commercialize the Arbutus Licensed Product(s). The Company shall notify Gritstone Arbutus of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and Patents Covering Joint IP and provide Gritstone Arbutus with copies of all material filings filings, submissions, communications, correspondence or responses to be made to to, or received from, the patent authorities with respect to such Arbutus Patents (subject to Section 5.2(b), in the case of the Royalty Patents) and Patents Covering Joint IP, with sufficient time to allow for review and comment by Arbutus. Arbutus shall offer its comments or proposals, if any, promptly, and the Company shall not unreasonably reject any such comments and proposals. Notwithstanding the above, the Company shall have the final decision making authority with respect to the Arbutus Patent claim(s) (subject to Section 5.2(b), in the case of the Royalty Patents); provided, however, if the claims of an Arbutus Patent or Patent Covering Joint IP substantially Cover an Arbutus Licensed Product, the Company shall make reasonable efforts to reach an agreement with Arbutus on the prosecution strategy. In the event that the Company desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of any of the Arbutus Patents or Patents Covering Joint IP, the Company shall provide reasonable prior written notice to Arbutus of such intention (which notice shall, in any event, be given no later than thirty (30) days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and Arbutus shall have the right, but not the obligation, to assume, at its sole cost and expense, responsibility for the prosecution and maintenance thereof.
(b) Notwithstanding the provisions of Section 5.2(a) above, a certain subset of the Arbutus Patents shall be subject to the following:
(i) The Parties agree that the following Arbutus Patents shall be subject to the terms of this Section 5.2(b) (hereafter the “Royalty Patents”): (A) [***]; (B) [***]; (C) [***]; (D) [***]; (E) [***]; (F) [***]; and (G) all patents and patent applications claiming benefit of priority of any of the patents described in clauses (A) through (F) above.
(ii) Rights and responsibilities for prosecution and maintenance of the Royalty Patents (but not the defense of the Royalty Patents in an IPR, post-grant review, opposition proceedings, administrative proceedings, and any similar patent office proceedings in the Territory or appeals of any decisions rendered with respect to any such IPRs, post-grant review, opposition proceedings, administrative proceedings, and any similar patent office proceedings in the Territory, which shall be governed by Section 5.2(a)(iii) below) shall be subject to the following:
(1) The Company shall have the right and responsibility at its sole cost and expense with input from Arbutus, to file, prosecute, maintain or abandon patent protection, in the Territory for the Royalty Patents. The Company (or the Company’s authorized attorneys, agents or representatives) shall proactively communicate to Arbutus any action and/or proposed strategy related to filing, prosecuting, or abandoning patent protection in the Territory for any patent or application that is a Royalty Patent (collectively, the “contemplated actions”). Arbutus shall have the right to propose contemplated actions to the Company and the Company shall consider in good faith, and shall not unreasonably reject, any such proposed contemplated action.
(2) Arbutus shall notify the Company if any such contemplated action related to a Royalty Patent, or the failure to pursue any contemplated action proposed by Arbutus related to a Royalty Patent, could reasonably be considered to put the Patisiran royalty in jeopardy. Arbutus shall offer its comments or proposals with respect to any contemplated action, if any, promptly, and the Company shall not unreasonably reject any such comments and proposals. The Company shall make commercially reasonable efforts to work collaboratively with Arbutus to develop a mutually agreeable strategy for how to proceed with the contemplated action and prior to taking or failing to take any contemplated action that Arbutus determines could have a material impact on Arbutus’ interest, the Company shall provide to Arbutus prior notice and a reasonable opportunity to comment on such contemplated action. In keeping with the above, the Company shall have the final decision making authority with respect to any contemplated actions for the Royalty Patents.
(3) In the event that the Company desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of any of the Royalty Patent, the Company shall provide reasonable prior written notice to Arbutus of such intention (which notice shall, in any event, be given no later than thirty (30) days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and Arbutus shall have the right, but not the obligation, to assume, at its sole cost and expense, responsibility for the prosecution and maintenance thereof.
(iii) Notwithstanding the provisions of Sections 5.2(a), 5.2(b)(i) and 5.2(b)(ii) above and with the exception of patent office proceedings under Section 5.2(b)(iv), Arbutus shall have the right and responsibility, at its sole cost and expense, to prosecute and maintain: (A) the pending Inter Partes Reviews (“IPRs”) for [***] and [***]; (B) all other IPRs, post-grant review, opposition proceedings, administrative proceedings, and any similar patent office proceedings in the Territory that arise with respect to any Royalty Patents (if any); (C) all appeals of any decisions rendered with respect to any such IPRs, post-grant review, opposition proceedings, administrative proceedings, and any similar patent office proceedings in the Territory with respect to the Royalty Patents; and (D) (except for challenges to validity or enforceability of the Royalty Patents arising in response to a Third Party Infringement Action brought by or threatened by the Company) all other challenges to the validity or enforceability of the Royalty Patents in any other administrative, judicial or arbitral proceeding (collectively “Royalty Patent Challenges”). Arbutus shall select legal counsel to participate in such Royalty Patent Challenge, provided that, Arbutus shall use reasonable efforts to select legal counsel that the Parties mutually agree upon. Arbutus shall provide the Company with copies of all official actions, material submissions and correspondence with any filings, or responses received from, or to be made to, the patent authorities regarding such Arbutus Patents with respect to any Royalty Patent Challenge, in sufficient time to allow for review and comment by Gritstonethe Company. Gritstone The Company shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposals. Arbutus shall work collaboratively with the Company to develop a mutually agreeable strategy for prosecuting and defending any Royalty Patent Challenge. Notwithstanding the above, Arbutus shall have final decision-making authority on Royalty Patent Challenges, provided that, Arbutus shall obtain the Company’s prior, written approval (not to be unreasonably withheld, conditioned or delayed) before (1) narrowing by amendment or cancelling any claims of any Royalty Patent or [***]; (2) agreeing to enter into any settlement agreement with respect to any Royalty Patent Challenge; (3) expressly dedicating any subject matter of any Royalty Patent or [***] to the public (including terminal disclaimers); (4) expressly agreeing to or proposing any claim construction of any Royalty Patent or [***]; (5) creating any claim estoppels by express disclaimer of claim scope with respect to any Royalty Patent or [***]; (6) agreeing to an adverse judgment with respect to a Royalty Patent Challenge; (7) filing a reissue or ex parte reexamination of any Royalty Patent or [***]; or (8) attempting to provoke an interference or derivation proceeding of any Royalty Patent or [***]; and further provided that, Arbutus shall seek review and input from the Company regarding characterizing any claims or disclosure of any Arbutus Patent. In the event that Arbutus makes a determination that any relevant Royalty Patent Challenge is not reasonably expected to have any effect upon Arbutus’ rights to the Patisiran royalties, Arbutus shall transfer final decision-making authority with respect to such Royalty Patent Challenge to the Company.
(biv) Gritstone The Company shall have final decision-making authority with respect to any IPRs, post-grant review, opposition proceedings, administrative proceedings, or any similar patent office proceedings challenging the validity or enforceability of a Royalty Patent that arises in response to a Third Party Infringement Action initiated or threatened by the Company, provided that, in the course of any such patent office proceedings, the Company shall be obligated to comply with all the requirements of consultation and cooperation imposed by Section 5.2(b)(iii) upon Arbutus with respect to the Company, mutatis mutandis.
(v) In the event that Arbutus desires to abandon, withdraw or otherwise discontinue any Royalty Patent Challenge or discontinue defending the validity or enforceability of any Royalty Patent involved in a Royalty Patent Challenge, Arbutus shall provide reasonable prior written notice to the Company of such intention (which notice shall, in any event, be given no later than thirty (30) days prior to the next deadline for any action that may be taken with respect to such Royalty Patent Challenge) and the Company shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof. If either Party desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of any Royalty Patent, such Party shall provide reasonable prior written notice to the other Party of such intention (which notice shall, in any event, be given no later than thirty (30) days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and the other Party shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof.
(vi) If Patisiran development and/or commercialization is discontinued such that Arbutus determines that there is no Patisiran royalty in the Territory, the Company shall have the sole right and responsibility at its sole cost and expense, to file, prosecute, maintain or abandon patent protection, post-grant review, inter partes review, or opposition proceedings and any similar patent office proceedings in such Territory and to appeal any decisions rendered with respect to any such IPRs, post-grant review, opposition proceedings, administrative proceedings, and any similar patent office proceedings in the Territory for all of the Royalty Patents under Section 5.2(a) without the limitations of Section 5.2(b).
(c) The Parties hereby agree as to Arbutus Patents (including the Royalty Patents) and Patents Covering Joint IP:
(i) to make its employees, agents and consultants reasonably available to the other Party (or the other Party’s authorized attorneys, agents or representatives), to the extent reasonably necessary to enable such Party to file, prosecute, maintain or abandon patent protection, post-grant review, inter partes review, or opposition proceedings, and any similar proceedings as contemplated by Sections 5.2(a) and 5.2(b);
(ii) to cooperate, if necessary and appropriate, with the other Party in gaining patent term extensions whenever applicable to patent rights; and
(iii) to endeavor in good faith to coordinate its efforts wherever possible or reasonable to minimize or avoid interference with the prosecution and maintenance of patent applications that Cover a Product(s) or Arbutus Licensed Product(s).
(d) Arbutus shall have the sole right and responsibility at its sole cost and expense to file, prosecute, maintain or abandon patent protection, post-grant review, inter partes review, or opposition proceedings, and any similar proceedings in the Territory for the Arbutus Controlled Patent. Arbutus shall notify the Company of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Controlled Patent and provide the Company with copies of all material filings, submissions, communications, or responses to be made to the patent authorities with respect to the Arbutus Controlled Patent in sufficient time to allow for review and comment by the Company. The Company shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposals. Notwithstanding the above, Arbutus shall have the final decision making authority. In the event that Arbutus desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of any of the Arbutus Controlled Patent, Arbutus shall provide reasonable prior written notice to the Company of such intention (which notice shall, in any event, be given no later than thirty (30) days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and the Company shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof.
(e) The Company shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone Company Background IP, or Product Company Improvement IP, and After Acquired Intellectual Property Controlled by the Company exclusive of Joint IP, which is covered by Section 5.2(a) (subject to the terms of any Third Party agreement, if applicable), including patent term extensions and defending opposition, re-examinationreexamination, post-grant review review, inter partes review, or opposition proceedings, and any similar patent office proceedings.
(c) Subject to Section 6.2(d), [***], by counsel it selects to whom [***] has no reasonable objection, in consultation with [***], shall be responsible for the preparation, filing, prosecution and maintenance of the Patents Covering Joint IP in the countries selected by [***] in consultation with [***]. [***] shall provide [***] with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities.
(d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and [***] shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof.
(e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties.
(f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone claim(s) that Cover Company Improvement IP or Gritstone Sole IP and/or that Covers a Company Product; and (ii) Gritstone the Company shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP claim(s) that Covers an HBV Payload or Arbutus Sole IPclaims to treating HBV, in each case without the other Party’s prior written consent.
(g) Upon reasonable request by Arbutus, the Company will timely provide an up-to-date written report showing all Arbutus Patents licensed to and being prosecuted or maintained by the Company. The report will include at least the title, application serial number, filing date, country, and status for each licensed Arbutus Patent that is being prosecuted or maintained by the Company. Upon reasonable request by the Company, Arbutus will timely provide an up-to-date written report showing all Royalty Patents or Arbutus Controll
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