Common use of Joint Patents Clause in Contracts

Joint Patents. Except as otherwise provided in this Section 7.3(c), Provention shall have the primary right and authority to prepare, file, prosecute and maintain the Patent Rights included in the Joint Inventions (“Joint Patents”) on a worldwide basis at its own expense. Provention shall provide MacroGenics with a reasonable opportunity to review and comment on its efforts to prepare, file, prosecute and maintain Joint Patents, including by providing MacroGenics with a copy of material communications from any patent authority regarding any Joint Patent, and by providing drafts of any material filings or responses to be made in advance of submitting such filings or responses. Provention shall consider MacroGenics’ comments regarding such communications and drafts in good faith and shall not unreasonably disregard any such comments. If Provention determines in its discretion to abandon or not maintain any Joint Patent(s) in any country(ies) of the world, then Provention shall provide MacroGenics with written notice of such determination within such period of time reasonably necessary to allow MacroGenics to determine its interest in such Joint Patent(s) (which notice from Provention shall be given no later than sixty (60) days prior to any final deadline for any pending action or response that may be due with respect to such Joint Patent(s) with the applicable patent authority). If MacroGenics provides written notice expressing its interest in obtaining such Joint Patent(s), Provention shall, free of charge, assign and transfer to MacroGenics the ownership of, and interest in, such Joint Patent(s) in such country(ies), at MacroGenics’ own expense, and Provention shall cooperate with MacroGenics for assignment and transfer of such Joint Patent(s) in such country. Thereafter, all such assigned and transferred Patents will be deemed MacroGenics Platform Patents and MacroGenics shall have the sole right to prepare, file, prosecute and maintain such Patent Rights as set forth in Section 7.3(a).

Joint Patents. Except With respect to the decision to initiate the drafting and filing of a new patent application claiming Joint Technology, the Parties shall first exchange sufficient information identifying such Joint Technology and discuss in good faith the relative merits of seeking patent rights thereto and, upon the prior mutual agreement of the Parties to proceed, not unreasonably withheld, Zogenix shall take such actions as otherwise provided in this Section 7.3(c), Provention shall have the primary right and authority are necessary or appropriate to prepare, fileprocure, prosecute and maintain the Patent Rights included in the patents and/or patent applications to such Joint Inventions Technology (“Joint PatentsPatent Rights”) (including any issuance, reissuance or reexamination thereof and the defense of any interference, revocation or opposition proceedings related thereto) [***] Zogenix shall furnish Durect with copies of drafts of such Joint Patent Rights and any substantive prosecution correspondence relating thereto to and from patent offices throughout the Territory and permit Durect to offer its comments thereon before Zogenix makes any submission or response to a patent office. Zogenix will inform Durect of the *** Certain information on a worldwide basis at this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. countries in which it intends to file Joint Patent Rights. Durect shall offer its own expensecomments promptly, including any request that the Joint Patent Rights be filed in additional countries; [***]. Provention If Zogenix determines in its sole discretion not to file, prosecute, defend or maintain any Joint Patent Rights (including failing to defend any interference, revocation or opposition proceedings) in any country, then Zogenix shall provide MacroGenics Durect with [***]prior written notice (or, if not possible, such shorter time period that would permit Durect a reasonable opportunity to review and comment on its efforts to prepare, file, prosecute and maintain Joint Patents, including by providing MacroGenics with respond in a copy timely manner) of material communications from any patent authority regarding any Joint Patentsuch determination, and by providing drafts of any material filings or responses to be made in advance of submitting such filings or responses. Provention shall consider MacroGenics’ comments regarding such communications and drafts in good faith and shall not unreasonably disregard any such comments. If Provention determines in its discretion to abandon or not maintain any Joint Patent(s) in any country(ies) of the world, then Provention shall provide MacroGenics with written notice of such determination within such period of time reasonably necessary to allow MacroGenics to determine its interest in such Joint Patent(s) (which notice from Provention shall be given no later than sixty (60) days prior to any final deadline for any pending action or response that may be due with respect to such Joint Patent(s) with the applicable patent authority). If MacroGenics provides written notice expressing its interest in obtaining such Joint Patent(s), Provention shall, free of charge, assign and transfer to MacroGenics the ownership of, and interest in, such Joint Patent(s) in such country(ies), at MacroGenics’ own expense, and Provention shall cooperate with MacroGenics for assignment and transfer of such Joint Patent(s) in such country. Thereafter, all such assigned and transferred Patents will be deemed MacroGenics Platform Patents and MacroGenics Durect shall have the sole right and opportunity to prepare, file, prosecute and prosecute, defend and/or maintain such Joint Patent Rights as set forth in Section 7.3(a)on behalf of the Parties at [***].

Joint Patents. Except as otherwise provided in this Section 7.3(c), Provention AbbVie shall have the primary right first right, but not the obligation, at its sole cost and authority expense, to prepare, file, prosecute and maintain the Patent Rights included in the Joint Inventions (“Joint Patents”) on a worldwide basis at its own expense. Provention shall provide MacroGenics with a reasonable opportunity to review and comment on its efforts to prepare, file, prosecute and maintain Joint Patents, including by providing MacroGenics with a copy of material communications from any patent authority regarding any Joint Patentprosecute, and by providing drafts of any material filings or responses to be made in advance of submitting such filings or responses. Provention shall consider MacroGenics’ comments regarding such communications and drafts in good faith and shall not unreasonably disregard any such comments. If Provention determines in its discretion to abandon or not maintain any Joint Patent(s) in any country(ies) of the world, then Provention shall provide MacroGenics with written notice of such determination within such period of time reasonably necessary to allow MacroGenics to determine its interest in such Joint Patent(s) (which notice from Provention shall be given no later than sixty (60) days prior to any final deadline for any pending action or response that may be due with respect to such Joint Patent(s) with the applicable patent authority). If MacroGenics provides written notice expressing its interest in obtaining such Joint Patent(s), Provention shall, free of charge, assign and transfer to MacroGenics the ownership ofPatents [**], and interest into conduct any Defense Proceeding relating thereto using counsel of its own choice, such Joint Patent(s) in such country(ies)provided that, at MacroGenics’ own expensesubject to Section [**], and Provention shall cooperate with MacroGenics for assignment and transfer of such Joint Patent(s) in such country. Thereafter, all such assigned and transferred Patents ▇▇▇▇▇ will be deemed MacroGenics Platform Patents and MacroGenics shall have the sole right to prepare, file, prosecute prosecute, and maintain any Joint Patents [**]. AbbVie shall notify Xilio of all material developments and all steps to be taken in connection with the filing and prosecution of such Joint Patents (including Defense Proceedings related thereto) and provide ▇▇▇▇▇ with copies of all material filings or responses to be made to the patent authorities with respect thereto and all other material submissions and correspondence with any patent authorities regarding any Joint Patent, in each case, in sufficient time to allow for review and comment by ▇▇▇▇▇. [**]. If AbbVie elects not to prepare, file, prosecute or maintain, or not to initiate or continue any Defense Proceeding related to, any Joint Patent Rights as set forth in Section 7.3(aa particular country, [**]. If ▇▇▇▇▇ elects to prosecute any Joint Patent in a particular country (including Defense Proceedings related thereto)., ▇▇▇▇▇ shall notify AbbVie of all material developments and all steps to be taken in connection with the filing and prosecution of the Joint Patents and provide AbbVie with copies of all material filings or responses to be made to the patent authorities with respect thereto and all other material submissions and correspondence with any patent authorities regarding any Joint Patent, in each case, in sufficient time to allow for review and comment by ▇▇▇▇▇▇. AbbVie shall offer its comments or proposals, if any, promptly, and Xilio shall consider in good faith such comments and proposals and shall implement any such comments or proposals that are necessary for the applicable filing or response to be consistent with AbbVie’s global patent strategy for the Licensed Products. ​ ​ ​

Joint Patents. Except as otherwise provided in this Section 7.3(c10.3(d), Provention Company shall have the primary right and authority to prepare, file, prosecute and maintain the Patent Rights Patents included in the Joint Inventions (“"Joint Patents”") on a worldwide basis at its own expense. Provention Company shall provide MacroGenics with a reasonable opportunity to review and comment on its efforts to prepare, file, prosecute and maintain Joint Patents, including by providing MacroGenics with a copy of material communications from any patent authority regarding any Joint Patent, and by providing drafts of any material filings or responses to be made in advance of submitting such filings or responses. Provention Company shall consider MacroGenics’ ' comments regarding such communications and drafts in good faith and shall not unreasonably disregard any such commentsfaith. If Provention Company determines in its discretion to abandon or not maintain any Joint Patent(s) in any country(ies) of the world, then Provention Company shall provide MacroGenics with written notice of such determination within such a period of time reasonably necessary to allow MacroGenics to determine its interest in such Joint Patent(s) (which notice from Provention Company shall be given no later than sixty (60) days [***] prior to any final deadline for any pending action or response that may be due with respect to such Joint Patent(s) with the applicable patent authority). If MacroGenics provides written notice expressing its interest in obtaining such Joint Patent(s), Provention Company shall, free of charge, assign and transfer to MacroGenics the ownership of, and interest in, such Joint Patent(s) in such country(ies), at MacroGenics’ ' own expense, and Provention Company shall cooperate with MacroGenics for assignment and transfer of such Joint Patent(s) in such country. Thereafter, all such assigned and transferred Patents will be deemed MacroGenics Platform Patents and MacroGenics shall have the sole right to prepare, file, prosecute and maintain such Patent Rights Patents as set forth in Section 7.3(a10.3(a).

Joint Patents. Except as otherwise provided in this Section 7.3(c8.3(c), Provention Harrow shall have the primary right and authority authority, to prepare, file, prosecute and maintain the Patent Rights included Joint Patents in the Joint Inventions (“Joint Patents”) on a worldwide basis Territory at its own expenseexpense and using external patent counsel in the Territory that is reasonably acceptable to Sintetica. Provention Harrow shall provide MacroGenics Harrow with a reasonable opportunity to review and comment on its such efforts to prepare, file, prosecute and maintain regarding such Joint PatentsPatent, including by providing MacroGenics Sintetica with a copy of material communications from any patent authority in such country(ies) in the Territory regarding any such Joint Patent, and by providing drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Provention Harrow shall consider MacroGenics’ Sintetica’s comments regarding such communications and drafts in good faith and shall not unreasonably disregard any such commentsfaith. If Provention Harrow determines in its sole discretion to abandon or not maintain any Joint Patent(s) Patent in any country(ies) of the worldTerritory, then Provention Harrow shall provide MacroGenics Sintetica with written notice of such determination within such a period of time reasonably necessary to allow MacroGenics Sintetica to determine its interest in such Joint Patent(s) Patent (which notice from Provention Harrow shall be given no later than sixty (60) days prior to any final deadline for any pending action or response that may be due with respect to such Joint Patent(s) Patent with the applicable patent authority). If MacroGenics In the event Sintetica provides written notice expressing its that it has an interest in obtaining full ownership title to such Joint Patent(s), Provention shall(a) Harrow shall promptly deliver to Sintetica copies of all necessary files related to such Joint Patent(s), free of and shall take all actions and execute all documents reasonably necessary to charge, assign and transfer to MacroGenics Sintetica the full ownership of, and interest in, such Joint Patent(s) Patent in the applicable jurisdiction in the Territory so that, for all extents and purposes, such country(ies), at MacroGenics’ own expensePatent shall become a Sintetica Patent, and Provention Sintetica shall cooperate with MacroGenics for assignment and transfer of grant to Harrow an irrevocable royalty-free license to such Joint Patent(s) in such countrySintetica Patent. Thereafter, all such assigned and transferred Patents will be deemed MacroGenics Platform Patents and MacroGenics Sintetica shall have the sole right and authority, to prepare, file, prosecute and maintain such Patent Rights as set forth in Section 7.3(a)the Joint Patents outside of the Territory at its own expense.

Joint Patents. Except as otherwise provided in this Section 7.3(c)(i) As between the Parties, Provention ▇▇▇▇▇▇▇ shall have the primary right and authority first right, but not the obligation, to prepare, file, prosecute and maintain all Joint Patents throughout the Patent Rights included in the Joint Inventions (“Joint Patents”) on a worldwide basis world, at its own expense. Provention Sangamo shall keep Pfizer reasonably informed of the status of Joint Patents and shall promptly provide MacroGenics Pfizer with a reasonable opportunity material correspondence received from any patent authorities in connection therewith. In addition, ▇▇▇▇▇▇▇ shall promptly provide Pfizer with drafts of all proposed material filings and correspondence to any patent authorities with respect to Joint Patents for Pfizer’s review and comment on its efforts prior to prepare, file, prosecute the submission of such proposed filings and maintain Joint Patents, including by providing MacroGenics correspondence. Sangamo shall confer with a copy of material communications from any patent authority regarding any Joint Patent, Pfizer and by providing drafts of any material filings or responses take into consideration Pfizer’s comments prior to be made in advance of submitting such filings or responses. Provention shall consider MacroGenics’ and correspondence, provided that Pfizer provides such comments regarding such communications within [*] days of receiving the draft filings and drafts in good faith and shall not unreasonably disregard any such commentscorrespondence from ▇▇▇▇▇▇▇. If Provention determines in its discretion to abandon or Pfizer does not maintain any Joint Patent(s) in any country(ies) of the world, then Provention shall provide MacroGenics with written notice of such determination comments within such period of time reasonably necessary to allow MacroGenics to determine its interest in such Joint Patent(s) (which notice from Provention time, then Pfizer shall be given deemed to have no later than sixty comment to such proposed filings or correspondence. Subject to Pfizer’s right to continue prosecution and maintenance of a Joint Patent pursuant to clause (60ii) below, in case of a disagreement between the Parties with respect to the filing, prosecution or maintenance of Joint Patents, the final decision shall be made by ▇▇▇▇▇▇▇. (ii) Sangamo shall notify Pfizer of any decision to cease prosecution and/or maintenance of any Joint Patent in any country. Sangamo shall provide such notice at least [*] days prior to any final deadline for filing or payment due date, or any pending other 56 [*] = Certain confidential information contained in this document, marked by brackets, has been omitted because it is both (i) not material and (ii) would be competitively harmful if publicly disclosed. due date that requires action in order to avoid loss of rights, in connection with such Joint Patent. In such event, Sangamo shall permit Pfizer, at its discretion and expense, to continue prosecution or response that may be due maintenance of such Joint Patent in such country. Pfizer’s prosecution or maintenance of such Joint Patent shall not change the Parties’ respective rights and obligations under this Agreement with respect to such Joint Patent(s) with the applicable patent authority). If MacroGenics provides written notice expressing its interest in obtaining such Joint Patent(s), Provention shall, free of charge, assign and transfer to MacroGenics the ownership of, and interest in, such Joint Patent(s) in such country(ies), at MacroGenics’ own expense, and Provention shall cooperate with MacroGenics for assignment and transfer of such Joint Patent(s) in such country. Thereafter, all such assigned and transferred Patents will be deemed MacroGenics Platform Patents and MacroGenics shall have the sole right to prepare, file, prosecute and maintain such Patent Rights as other than those expressly set forth in this Section 7.3(a10.2(b).

Joint Patents. Except as otherwise provided in this Section 7.3(c)10.30, Provention Company shall have the primary right and authority to prepare, file, prosecute and maintain the Patent Rights Patents included in the Joint Inventions (“Joint Patents”) on a worldwide basis at its own expense. Provention Company shall provide MacroGenics with a reasonable opportunity to review and comment on its efforts to prepare, file, prosecute and maintain Joint Patents, including by providing MacroGenics with a copy of material communications from any patent authority regarding any Joint Patent, and by providing drafts of any material filings or responses to be made in advance of submitting such filings or responses. Provention Company shall consider MacroGenics’ comments regarding such communications and drafts in good faith and shall not unreasonably disregard any such commentsfaith. If Provention Company determines in its discretion to abandon or not maintain any Joint Patent(s) in any country(ies) of the world, then Provention Company shall provide MacroGenics with written notice of such determination within such a period of time reasonably necessary to allow MacroGenics to determine its interest in such Joint Patent(s) (which notice from Provention Company shall be given no later than sixty (60) days [***] prior to any final deadline for any pending action or response that may be due with respect to such Joint Patent(s) with the applicable patent authority). If MacroGenics provides written notice expressing its interest in obtaining such Joint Patent(s), Provention Company shall, free of charge, assign and transfer to MacroGenics the ownership of, and interest in, such Joint Patent(s) in such country(ies), at MacroGenics’ own expense, and Provention Company shall cooperate with MacroGenics for assignment and transfer of such Joint Patent(s) in such country. Thereafter, all such assigned and transferred Patents will be deemed MacroGenics Platform Patents and MacroGenics shall have the sole right to prepare, file, prosecute and maintain such Patent Rights Patents as set forth in Section 7.3(a10.3(a).

Joint Patents. Except as otherwise provided in this Section 7.3(c9.3(d), Provention Takeda shall have the primary right and authority to prepare, file, prosecute and maintain the Patent Rights Patents included in the Joint Inventions (“Joint Patents”) on a worldwide basis at its own expense. Provention Takeda shall provide MacroGenics with a reasonable opportunity to review and comment on its efforts to prepare, file, prosecute and maintain Joint Patents, including by providing MacroGenics with a copy of material communications from any patent authority in such country(ies) regarding any Joint Patent, and by providing drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Provention Takeda shall consider MacroGenics’ comments regarding such communications and drafts in good faith and shall not unreasonably disregard any such commentsfaith. If Provention Takeda determines in its discretion to abandon or not maintain any Joint Patent(s) in any country(ies) of the world, then Provention Takeda shall provide MacroGenics with written notice of such determination within such a period of time reasonably necessary to allow MacroGenics to determine its interest in such Joint Patent(s) (which notice from Provention Takeda shall be given no later than sixty (60) days prior to any final deadline for any pending action or response that may be due with respect to such Joint Patent(s) with the applicable patent authority). If MacroGenics provides written notice expressing its interest in obtaining such Joint Patent(s), Provention Takeda shall, free of charge, assign and transfer to MacroGenics the ownership of, and interest in, such Joint Patent(s) in such country(ies), at MacroGenics’ own expense, and Provention Takeda shall cooperate with MacroGenics for assignment and transfer of such Joint Patent(s) in such country. Thereafter, all such assigned and transferred Patents will be deemed MacroGenics Platform Patents and MacroGenics shall have the sole right subject to prepare, file, prosecute and maintain such Patent Rights as set forth in Section 7.3(a)9.3(a) above.