Common use of Termination for Patent Challenge Clause in Contracts

Termination for Patent Challenge. If, during the Term, Licensee or its Sublicensee (or any Affiliate of Licensee or its Sublicensee) commences or participates in, or actively assists any other Person in bringing, any action or legal or administrative proceeding (including any patent opposition or re- examination proceeding), or otherwise asserts any claim, challenging or denying the patentability, validity or enforceability of any claim of the Eureka Licensed Patent Rights in one or more countries (each a “Patent Challenge”), then, Eureka will have the right to terminate this Agreement in its entirety upon 60 days’ prior written notice to Licensee unless Licensee or its Sublicensee (or the applicable Affiliate) causes such Patent Challenge(s) to be withdrawn within such 60-day period following receipt of written notice from Eureka (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges in which Licensee or its Sublicensee (or the applicable Affiliate) does not have the power to unilaterally cause the Patent Challenge(s) to be withdrawn, Licensee or its Sublicensee (or the applicable Affiliate) withdraws as a party from such Patent Challenge(s) and ceases actively assisting any other party to such Patent Challenge(s) within such 60-day period). The foregoing sentence will not apply with respect to (a) any Patent Challenge that is first made by Licensee, its Sublicensee or their Affiliates in defense of a claim of patent infringement brought by Eureka under the applicable Eureka Licensed Patent Rights at issue under such Patent Challenge, (b) any challenge brought by a Third Party which subsequently becomes an Affiliate of Licensee provided such challenge was initiated at least three months before the signing of the definitive document(s) whereby such Third Party became an Affiliate of Licensee, or (c) any challenge brought by a Sublicensee if Licensee terminates the sublicense granted to such Sublicensee upon such Sublicensee’s failure to comply with the obligations of the first sentence of this Section 13.5 applicable to Sublicensees of Licensee within such 60-day period.

Termination for Patent Challenge. If, during In the Term, Licensee event of a Patent Challenge by Pyxis or its Affiliates or Sublicensee, LCB may, in its sole discretion, as and to the extent permissible under applicable law, elect to terminate the Agreement in whole or in part with respect to the Patent Rights that are the subject of the Patent Challenge, upon [***] notice in writing to Pyxis, such termination to take effect immediately following such notice period; provided that if Pyxis or its Affiliate or Sublicensee withdraws (or any Affiliate of Licensee or its Sublicenseecauses to be withdrawn) commences or participates in, or actively assists any other Person such Patent Challenge within [***] after being requested to do so by LCB in bringing, any action or legal or administrative proceeding writing (including any patent opposition or re- examination proceedingwhich termination notice will be deemed a request), or otherwise asserts any claim, challenging or denying the patentability, validity or enforceability of any claim of the Eureka Licensed Patent Rights in one or more countries (each a “Patent Challenge”), then, Eureka then LCB will have the no right to terminate this the licenses under the Agreement in its entirety upon 60 days’ prior written notice to Licensee unless Licensee or its Sublicensee (or the applicable Affiliate) causes such Patent Challenge(s) to be withdrawn within such 60-day period following receipt of written notice from Eureka (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges in which Licensee or its Sublicensee (or the applicable Affiliate) does not have the power to unilaterally cause the Patent Challenge(s) to be withdrawn, Licensee or its Sublicensee (or the applicable Affiliate) withdraws as a party from such Patent Challenge(s) and ceases actively assisting any other party with respect to such Patent Challenge(sRights pursuant to this Section 10.2(d) within such 60-day period(Termination for Patent Challenge). The foregoing sentence In addition, notwithstanding the foregoing, LCB will not apply have no right to terminate the relevant licenses under the relevant Patent Rights under the Agreement pursuant to this Section 10.2(d) (Termination for Patent Challenge) with respect to: (i) any affirmative defense or other validity, enforceability, or non-infringement challenge, whether in the same action or in any other agency or forum of competent jurisdiction, advanced by Pyxis, or any of its Affiliates or Sublicensees in response to any claim or action brought in the first instance by, or on behalf of, LCB, (aii) any Patent Challenge that is first made commenced by Licenseea Sublicensee, its provided that Pyxis demands that such Sublicensee or their Affiliates in defense withdraw such Patent Challenge promptly after Pyxis becomes aware of a claim of patent infringement brought by Eureka under such Patent Challenge and terminates the sublicense agreement with the applicable Eureka Licensed Patent Rights at issue under Sublicensee if such Sublicensee does not withdraw such Patent Challenge, Challenge within [***]] after receipt of notice from Pyxis; or (biii) any challenge Patent Challenge brought by a Third Party which subsequently becomes [***] or more prior to the initial written indication of interest that results in such Third Party becoming an Affiliate of Licensee provided such challenge was initiated at least three months before the signing Pyxis as a result of the definitive document(s) whereby a Change of Control of Pyxis or such Third Party became an Affiliate of Licenseeas long as Pyxis or such Third Party, its Affiliates and their sublicensees, as applicable, institute commercially reasonable safeguards or (c) firewalls between the personnel and advisors assisting or working on such Patent Challenge and personnel and advisors assisting or working on any challenge brought by a Sublicensee if Licensee terminates the sublicense granted Licensed Product or ROFN Eligible Product so that personnel and advisors assisting or working on such Patent Challenge do not have access to such Sublicensee upon such Sublicensee’s failure to comply with the obligations of the first sentence of this Section 13.5 applicable to Sublicensees of Licensee within such 60-day period.or knowledge of, and may not use, LCB IP or Arising IP;

Termination for Patent Challenge. If, during In the Term, Licensee or its Sublicensee (or any Affiliate event of Licensee or its Sublicensee) commences or participates in, or actively assists any other Person in bringing, any action or legal or administrative proceeding (including any patent opposition or re- examination proceeding), or otherwise asserts any claim, challenging or denying the patentability, validity or enforceability of any claim of the Eureka Licensed Patent Rights in one or more countries (each a “Patent Challenge”), then, Eureka Agenus will have the right right, exercisable within 60 days following receipt of notice regarding such Patent Challenge, to terminate this Agreement in its entirety upon 60 days’ prior written give notice to Licensee MiNK requesting that MiNK cease such Patent Challenge, and, unless Licensee MiNK or its Sublicensee (or the applicable Affiliate) causes such Patent Challenge(s) Challenge to be withdrawn within 90 days of receiving such 60-day period following receipt of written notice from Eureka (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenges in which Licensee or its Sublicensee (or the applicable Affiliate) challenging party does not have the power to unilaterally cause the Patent Challenge(s) Challenge to be withdrawn, Licensee or its Sublicensee (or the applicable Affiliate) such challenging party withdraws as a party from such Patent Challenge(sChallenge (if applicable) and ceases actively assisting any other party to such Patent Challenge(s) Challenge within 90 days of receiving such 60-day periodnotice), Agenus may, in its sole discretion, terminate this Agreement by providing written notice thereof to MiNK. The foregoing sentence termination right will not apply with respect to (a) any claim of the Licensed Patent Right that Agenus first asserts against MiNK, a Sublicensee or any of their Affiliates where the Patent Challenge that is first made by Licensee, its Sublicensee or their Affiliates in defense of a claim of patent infringement brought by Eureka under the applicable Eureka Licensed Patent Rights at issue under such Patent Challengeassertion, or (b) any challenge brought Patent Challenge commenced by a Third Party which subsequently becomes that after the Effective Date acquires or is acquired by MiNK, a Sublicensee, or one of their Affiliates or its or their business or assets, whether by stock purchase, merger, asset purchase, or otherwise, but only with respect to a Patent Challenge commenced prior to the execution of the purchase agreement or merger agreement for such acquisition. In addition, with respect to any Patent Challenge commenced by a Sublicensee (or an Affiliate of Licensee provided such challenge was initiated at least three months before a Sublicensee), Agenus may not terminate the signing of license granted to MiNK under the definitive document(s) whereby such Third Party became an Affiliate of Licensee, or (c) any challenge brought by a Sublicensee applicable Licensed Patent Rights if Licensee MiNK promptly terminates the sublicense granted to such Sublicensee upon such the Sublicensee’s (or its Affiliate’s) failure to comply with the obligations of the first sentence of this Section 13.5 applicable cause any Patent Challenge initiated by it to Sublicensees of Licensee be withdrawn within such 6090-day notice period (or in the case of ex-parte proceedings, multi-party proceedings, or other Patent Challenge in which the challenging party does not have the power to unilaterally cause the Patent Challenge to be withdrawn, upon the Sublicensee’s (or its Affiliate’s) failure to withdraw as a party from such Patent Challenge and cease actively assisting any other party to such Patent Challenge within such 90-day notice period).

Termination for Patent Challenge. If, during the Term, Licensee or its Sublicensee (or any Affiliate of Licensee or its Sublicenseea) commences or participates in, or actively assists any other Person in bringing, any action or legal or administrative proceeding (including any patent opposition or re- examination proceeding), or otherwise asserts any claim, challenging or denying the patentability, validity or enforceability of any claim of the Eureka Licensed Patent Rights in one or more countries (each a “Patent Challenge”), then, Eureka will BMS shall have the right to terminate this Agreement in its entirety upon 60 days’ prior written notice to Licensee unless Licensee or its Sublicensee in the event Company (or any of its Affiliates) challenges or knowingly supports (other than as may be necessary or reasonably required to assert a cross-claim or a counter-claim, or in response to a subpoena or court or administrative law request or order), including by providing information, documents, and/or funding, a challenge to the applicable Affiliatevalidity, scope, enforceability or patentability of any of the BMS Patent Rights or Adnectin Platform Patents CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE COPY FILED HEREWITH OMITS THE INFORMATION SUBJECT TO A CONFIDENTIALITY REQUEST. OMISSIONS ARE DESIGNATED [***]. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. 51 ***Text Omitted and Filed Separately Confidential Treatment Requested Under 17 C.F.R. §§200.80(B)(4) causes such Patent Challenge(s) and 230.406 Rights. BMS’ right to terminate this Agreement under this Section 13.2.4 may be withdrawn within such 60-day period following receipt of written notice from Eureka exercised at any time after Company (or any of its Affiliates) may have challenged or knowingly supports (other than in response to a subpoena or court order) a challenge to the case validity, scope, enforceability or patentability of ex-parte proceedingsany of the BMS Patent Rights. For the avoidance of doubt, multi-party proceedings, an action by Company or other any Affiliate in accordance with Article 10 to amend claims within a pending patent application within the BMS Patent Challenges in which Licensee Rights during the course of Company’s prosecution and maintenance of such pending patent application or its Sublicensee (or the applicable Affiliate) does not have the power to unilaterally cause the Patent Challenge(s) to be withdrawn, Licensee or its Sublicensee (or the applicable Affiliate) withdraws as a party from such Patent Challenge(s) and ceases actively assisting any other party to such Patent Challenge(s) within such 60-day period). The foregoing sentence will not apply with respect to (a) any Patent Challenge that is first made by Licensee, its Sublicensee or their Affiliates in defense of a claim of patent infringement brought by Eureka under the applicable Eureka Licensed Patent Rights at issue under such Patent Challenge, (b) any challenge brought by a Third Party which subsequently becomes an Affiliate of Licensee provided such challenge was initiated at least three months before the signing of the definitive document(s) whereby such Third Party became an Affiliate of Licenseeproceeding, or (c) any to make a negative determination of patentability of claims of a patent application of BMS or to abandon a patent application of BMS during the course of Company’s prosecution and maintenance of such pending patent application, shall not, where undertaken in accordance with Article 10 hereof, constitute a challenge brought by a Sublicensee if Licensee terminates the sublicense granted to such Sublicensee upon such Sublicensee’s failure to comply with the obligations of the first sentence of under this Section 13.5 applicable to Sublicensees of Licensee within such 60-day period13.2.4.