Common use of Filing, Prosecution and Maintenance of Patents Clause in Contracts

Filing, Prosecution and Maintenance of Patents. 6.2.1. Inhibrx shall have the right, but not the obligation, to Prosecute Binder Patents at its own cost. Notwithstanding the foregoing, at Licensee’s request during the Program Term or after the exercise of the Option during the Term, to the extent a Binder Patent existing as of the Effective Date has a claim directed to a Licensed Product or the use of a Binder in the Field, Inhibrx shall use reasonable efforts, to the extent practical to do so, file divisional and/or continuation Patents consisting solely of claims to the Licensed Product or the use of a Binder in the Field, which Patent will be a Product-Specific Patent. During the Program Term or after the exercise of the Option during the Term: (a) Inhibrx shall copy Licensee on all correspondence from and to any patent office relating to Binder Patents that include claims to a Licensed Product or to use of a Binder in the Field in a timely manner, and Inhibrx shall provide Licensee with drafts of all filings and correspondence relating to the Prosecution of Binder Patents that include disclosure or claims to Licensed Products or to use of a Binder in the Field in reasonably adequate time before filing or submission of such materials, for Licensee’s review and comment. For avoidance of doubt, Inhibrx shall provide draft filings of Binder Patents that include disclosure or claims to Licensed Products or to use of a Binder in the Field before the Binder Patents are filed. Inhibrx will take into good faith consideration Licensee’s comments prior to submitting such filings and correspondences to the extent such comments are timely provided and it is practicable to do so. If there is a disagreement between the Parties with respect to the Prosecution (other than the initial preparation and filing) of claims of a Binder Patent to a Licensed Product or to the use of a Binder in the Field, then Inhibrx shall have the right to make the final decision. If there is a disagreement between the Parties with respect to the initial preparation and filing of a Binder Patent containing claims to a Licensed Product or to the use of a Binder in the Field, then Parties will discuss in good faith how to remedy the disagreement. Inhibrx shall provide Licensee an annual report summarizing the status of the Prosecution of the Binder Patents that include claims to use of a Binder in the Field. (b) Inhibrx shall notify Licensee of any decision not to Prosecute, including a decision not to continue to pay the expenses of prosecution or maintenance of, any Binder Patents, including divisional and continuation Patents. Inhibrx shall provide such notice at least [***] ([***]) [***] prior to any filing or payment due date, or any other due date that requires action, in connection with such Binder Patent. In such event, Licensee shall, upon written notice to Inhibrx, have the sole right, but not the obligation, to file for, or continue prosecution or maintenance of, such Binder Patent, at Licensee’s expense. Inhibrx shall cooperate with Licensee in its preparation, filing, prosecution and maintenance of such Binder Patents, including by providing Licensee with data and other information (but for avoidance of doubt, Inhibrx shall not be obligated to generate any additional data) as appropriate and executing all necessary affidavits, assignments and other paperwork.

Filing, Prosecution and Maintenance of Patents. 6.2.17.2.1. Inhibrx shall have the right, but not the obligation, to Prosecute Binder Patents at its own cost. Notwithstanding the foregoing, at Licensee’s request during the Program Term or after the exercise of the Option during the Termrequest, to the extent a Binder Patent existing as of the Effective Date has a claim directed to a Licensed Product or the use of a Binder in the Field, Inhibrx shall use reasonable efforts, to the extent practical to do so, file divisional and/or continuation Patents consisting solely of claims to the Licensed Product or the use of a Binder in the Field, which Patent will be a Product-Specific Patent. During the Program Term or after the exercise of the Option during the Term:. (a) Inhibrx shall copy Licensee on all correspondence from and to any patent office relating to Binder Patents that include claims to a Licensed Product or to use of a Binder in the Field in a timely manner, and Inhibrx shall provide Licensee with drafts of all filings and correspondence relating to the Prosecution of Binder Patents that include disclosure or claims to Licensed Products or to use of a Binder in the Field in reasonably adequate time before filing or submission of such materials, for Licensee’s review and comment. For avoidance of doubt, Inhibrx shall provide draft filings of Binder Patents that include disclosure or claims to Licensed Products or to use of a Binder in the Field before the Binder Patents are filed. Inhibrx will take into good faith consideration Licensee’s comments prior to submitting such filings and correspondences to the extent such comments are timely provided and it is practicable to do so. If there is a disagreement between the Parties with respect to the Prosecution (other than the initial preparation and filing) of claims of a Binder Patent to a Licensed Product or to the use of a Binder in the Field, then Inhibrx shall have the right to make the final decision. If there is a disagreement between the Parties with respect to the initial preparation and filing of a Binder Patent containing claims to a Licensed Product or to the use of a Binder in the Field, then Parties will discuss in good faith how to remedy the disagreement. Inhibrx shall provide Licensee an annual report summarizing the status of the Prosecution of the Binder Patents that include claims to use of a Binder in the Field. (b) Inhibrx shall notify Licensee of any decision not to Prosecute, including a decision not to continue to pay the expenses of prosecution or maintenance of, any Binder Patents, including divisional and continuation Patents. Inhibrx shall provide such notice at least [***] ([***]) [***] prior to any filing or payment due date, or any other due date that requires action, in connection with such Binder Patent. In such event, Licensee shall, upon written notice to Inhibrx, have the sole right, but not the obligation, to file for, or continue prosecution or maintenance of, such Binder Patent, at Licensee’s expense. Inhibrx shall cooperate with Licensee in its preparation, filing, prosecution and maintenance of such Binder Patents, including by providing Licensee with data and other information (but for avoidance of doubt, Inhibrx shall not be obligated to generate any additional data) as appropriate and executing all necessary affidavits, assignments and other paperwork.

Filing, Prosecution and Maintenance of Patents. 6.2.17.2.1. Inhibrx shall have the right, but not the obligation, to Prosecute Binder Patents at its own cost. Notwithstanding the foregoing, at Licensee’s request during the Program Term or after the exercise of the Option during the Termrequest, to the extent a Binder Patent existing as of the Effective Date has a claim directed to a Licensed Product or the use of a Binder in the Field, Inhibrx shall use reasonable efforts, to the extent practical to do so, file divisional and/or continuation Patents consisting solely of claims to the Licensed Product or the use of a Binder in the Field, which Patent will be a Product-Specific Patent. During the Program Term or after the exercise of the Option during the Term:. (a) Inhibrx shall copy Licensee on all correspondence from and to any patent office relating to Binder Patents that include claims to a Licensed Product or to use of a Binder in the Field in a timely manner, and Inhibrx shall provide Licensee with drafts of all filings and correspondence relating to the Prosecution of Binder Patents that include disclosure or claims to Licensed Products or to use of a Binder in the Field in reasonably adequate time before filing or submission of such materials, for Licensee’s review and comment. For avoidance of doubt, Inhibrx shall provide draft filings of Binder Patents that include disclosure or claims to Licensed Products or to use of a Binder in the Field before the Binder Patents are filed. Inhibrx will take into good faith consideration Licensee’s comments prior to submitting such filings and correspondences to the extent such comments are timely provided and it is practicable to do so. If there is a disagreement between the Parties with respect to the Prosecution (other than the initial preparation and filing) of claims of a Binder Patent to a Licensed Product or to the use of a Binder in the Field, then Inhibrx shall have the right to make the final decision. If there is a disagreement between the Parties with respect to the initial preparation and filing of a Binder Patent containing claims to a Licensed Product or to the use of a Binder in the Field, then Parties will discuss in good faith how to remedy the disagreement. Inhibrx shall provide Licensee an annual report summarizing the status of the Prosecution of the Binder Patents that include claims to use of a Binder in the Field. (b) Inhibrx shall notify Licensee of any decision not to Prosecute, including a decision not to continue to pay the expenses of prosecution or maintenance of, any Binder Patents, including divisional and continuation Patents. Inhibrx shall provide such notice at least [***] ([***]) [***] prior to any filing or payment due date, or any other due date that requires action, in connection with such Binder Patent. In such event, Licensee shall, upon written notice to Inhibrx, have the sole right, but not the obligation, to file for, or continue prosecution or maintenance of, such Binder Patent, at Licensee’s expense. Inhibrx shall cooperate with Licensee in its preparation, filing, prosecution and maintenance of such Binder Patents, including by providing Licensee with data and other information (but for avoidance of doubt, Inhibrx shall not be obligated to generate any additional data) as appropriate and executing all necessary affidavits, assignments and other paperwork.of