Common use of Patent Filings Clause in Contracts

Patent Filings. The Party responsible for Prosecution and Maintenance of any Patents as set forth in Sections 8.2.2 and 8.2.3 below (the "Prosecuting Party") shall use commercially reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds, using counsel of its own choice but reasonably acceptable to the other Party. Each Party shall keep the other Party informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including by providing copies of all office actions or any other substantive documents that such Party receives from any patent office, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing the other Party the timely opportunity to have reasonable input into the strategic aspects of such Prosecution and Maintenance. In addition, Anacor will use commercially reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds covered by any claims of the Anacor Patents, using counsel of its own choice but reasonably acceptable to GSK, and will consider and discuss in good faith reasonable comments timely provided GSK. In light of the new prosecution rules promulgated by the United States Patent and Trademark Office, effective November 1, 2007, and the likelihood for future changes in US Patent System and future changes to the European Patent Convention (EPC) (collectively, the "New Rules") and rules of practice in effect at the Effective Date (together with the New Rules, the "Rules") each Party will consult with the other Party prior to the filing of any Patents on Collaboration IP. The Parties will come to an agreement on filing strategy in view of the [***] THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. 44 Rules (e.g., claim limitations and continuation practice limitations mandated by the New Rules). In addition, the Parties will discuss in good faith with each other the breadth of any such Patent filings in countries outside of the United States. Should the Parties fail to agree on any matter in this Section 8.2.1, such matter will be presented to the JPS for resolution.

Patent Filings. Subject to Section 10.2(c) above, each Party, at its sole discretion, responsibility, and cost shall prepare, file, prosecute and maintain Patents to cover Inventions made solely by its own employees or independent contractors and use reasonable efforts to file initially all such applications in the United States, the EU or the appropriate forum under the circumstances. BASILEA shall be responsible for the prosecution or maintenance of the BASILEA Patents, subject to the remaining provisions of this Section. ASTELLAS shall file, prosecute and maintain Patents in the Territory and BASILEA shall file, prosecute and maintain Patents in the Retained Territory, to cover Inventions relating to the discovery, evaluation, Manufacture, use or sale of Products that are made jointly by employees or independent contractors of BASILEA and ASTELLAS (herein referred to as “Joint Patents”). The determination of filing Joint Patents in the Territory shall be made by ASTELLAS and ASTELLAS shall have the right to direct and control all material actions relating to the prosecution or maintenance of Joint Patents in the Territory, subject to BASILEA’s ability to comment on such filings and ASTELLAS’ reasonable consideration of such comments. BASILEA shall make such determination and direct and control such [***] INDICATES MATERIAL THAT HAS BEEN OMITTED AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO 17 C.F.R. SECTIONS 200.80(B)(4) AND 240.24B-2. actions in the Retained Territory. The Party responsible for Prosecution and Maintenance of any Patents as set forth in Sections 8.2.2 and 8.2.3 below filing a Patent (the "Prosecuting Party"including BASILEA with respect to BASILEA Patents) shall use commercially provide reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds, using counsel of its own choice but reasonably acceptable prior written notice to the other Party. Each Party shall keep , or in the case of BASILEA Patents to ASTELLAS, of the countries in which it intends to file, maintain or abandon a given Patent, and notify the other Party informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including by providing copies of all office actions or any other substantive documents that such Party receives from any patent office, including notice of all interferences, reissuesconflict proceedings, re-examinations, oppositions reissuance, oppositions, revocation proceedings or requests any other challenge relating to a given Patent, provided, however, that such other Party, or in the case of BASILEA Patents, ASTELLAS, shall have the right at its cost to file or continue prosecution or take over responsibility for patent term extensionsthe relevant proceedings in countries in the relevant territory which the filing Party determines it wishes to abandon or not file or not pursue or defend proceedings in relation to such Joint Patent or BASILEA Patent. The Party which wishes to abandon, and by providing not file or not pursue or not defend any such proceedings shall assign its rights in the relevant Patent to the other Party at no cost if requested by the timely opportunity other Party and shall be granted a non-exclusive, fully paid up license to use such Patent for any purpose not in conflict with any other provision of this Agreement (with no right to sublicense except to an Affiliate). If ASTELLAS takes over the responsibility for filing, prosecuting or pursuing or defending any such proceedings in the Territory (excluding, for the avoidance of doubt, any such defense proceedings taking place as part of an infringement action) to a BASILEA Patent such Patent shall be excluded from the definition of Relevant Valid Claim for the purposes of Section 6.3. BASILEA shall keep ASTELLAS regularly updated as to the progress of prosecution of and all other proceedings relating to the filing, maintenance and any challenge to the BASILEA Patents in the Territory. BASILEA shall provide reasonable prior written notice to ASTELLAS before taking any material step in relation to the prosecution or maintenance of or any other proceedings relating to the BASILEA Patents in Territory as reasonably required by ASTELLAS. BASILEA shall allow ASTELLAS to make comments and recommendations in relation thereto. BASILEA shall not knowingly do or omit to do anything which could have reasonable input into a detrimental effect on the strategic aspects of such Prosecution and Maintenance. In addition, Anacor will use commercially reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds covered by any claims of the Anacor Patents, using counsel of its own choice but reasonably acceptable to GSK, and will consider and discuss in good faith reasonable comments timely provided GSK. In light of the new prosecution rules promulgated afforded by the United States Patent and Trademark Office, effective November 1, 2007, and BASILEA Patents in the likelihood for future changes in US Patent System and future changes to the European Patent Convention (EPC) (collectively, the "New Rules") and rules of practice in effect at the Effective Date (together with the New Rules, the "Rules") each Party will consult with the other Party prior to the filing of any Patents on Collaboration IP. The Parties will come to an agreement on filing strategy in view of the [***] THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. 44 Rules (e.g., claim limitations and continuation practice limitations mandated by the New Rules). In addition, the Parties will discuss in good faith with each other the breadth of any such Patent filings in countries outside of the United States. Should the Parties fail to agree on any matter in this Section 8.2.1, such matter will be presented to the JPS for resolutionTerritory.

Patent Filings. The Party responsible for Prosecution and Maintenance of any Patents as set forth in Sections 8.2.2 and 8.2.3 below (the "“Prosecuting Party"”) shall use commercially reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds, using counsel of its own choice but reasonably acceptable to the other Party. Each Party shall keep the other Party informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including by providing copies of all office actions or any other substantive documents that such Party receives from any patent office, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing the other Party the timely opportunity to have reasonable input into the strategic aspects of such Prosecution and Maintenance. In addition, Anacor will use commercially reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds covered by any claims of the Anacor Patents, using counsel of its own choice but reasonably acceptable to GSK, and will consider and discuss in good faith reasonable comments timely provided GSK. In light of the new prosecution rules promulgated by the United States Patent and Trademark Office, effective November 1, 2007, and the likelihood for future changes in US Patent System and future changes to the European Patent Convention (EPC) (collectively, the "“New Rules"”) and rules of practice in effect at the Effective Date (together with the New Rules, the "“Rules"”) each Party will consult with the other Party prior to the filing of any Patents on Collaboration IP. The Parties will come to an agreement on filing strategy in view of the [***] THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. 44 Rules (e.g., claim limitations and continuation practice limitations mandated by the New Rules). In addition, the Parties will discuss in good faith with each other the breadth of any such Patent filings in countries outside of the United States. Should the Parties fail to agree on any matter in this Section 8.2.1, such matter will be presented to the JPS for resolution.

Patent Filings. The Party responsible for Prosecution and Maintenance of any Patents as set forth in Sections 8.2.2 and 8.2.3 below (the "Prosecuting Party") shall use commercially reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds, using counsel of its own choice but reasonably acceptable to the other Party. Each Party shall keep the other Party informed as to material developments with respect to the Prosecution and Maintenance of such Patents, including by providing copies of all office actions or any other substantive documents that such Party receives from any patent office, including notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions, and by providing the other Party the timely opportunity to have reasonable input into the strategic aspects of such Prosecution and Maintenance. In addition, Anacor will use commercially reasonable efforts to obtain a reasonable scope of protection for Collaboration Compounds covered by any claims of the Anacor Patents, using counsel of its own choice but reasonably acceptable to GSK, and will consider and discuss in good faith reasonable comments timely provided GSK. In light of the new prosecution rules promulgated by the United States Patent and Trademark Office, effective November 1, 2007, and the likelihood for future changes in US Patent System and future changes to the European Patent Convention (EPC) (collectively, the "New Rules") and rules of practice in effect at the Effective Date (together with the New Rules, the "Rules") each Party will consult with the other Party prior to the filing of any Patents on Collaboration IP. The Parties will come to an agreement on filing strategy in view of the [***] THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. 44 Rules (e.g., claim limitations and continuation practice limitations mandated by the New Rules). In addition, the Parties will discuss in good faith with each other the breadth of any such Patent filings in countries outside of the United States. Should the Parties fail to agree on any matter in this Section 8.2.1, such matter will be presented to the JPS for resolution.