Common use of Other Joint Patents Clause in Contracts

Other Joint Patents. Regulus will have the first right, subject to consultation and discussion at the Intellectual Property Sub-committee, but not the obligation, to prepare, file, prosecute and maintain Other Joint Patents, at Regulus’ sole expense and by counsel of its own choice. Regulus, or its outside counsel, will provide AstraZeneca with: (a) a reasonably detailed monthly update of the filing, prosecution and maintenance status for such Other Joint Patent and (b) any further information reasonably requested by AstraZeneca from time to time regarding such Other Joint Patent. Regulus will consider in good faith, and give effect to, all reasonable requests or recommendations of AstraZeneca regarding the preparation, filing, prosecution and maintenance of Other Joint Patents. In the event that ▇▇▇▇▇▇▇ decides not to pursue or continue the filing, prosecution or maintenance of any Other Joint Patent in any country, Regulus, or its outside counsel, will provide AstraZeneca with written notice of such decision at least 60 days in advance of any relevant filing, prosecution or maintenance deadline, and AstraZeneca will provide Regulus with prompt notice as to whether AstraZeneca desires to assume responsibility and costs for such filing, prosecution or maintenance of such Other Joint Patent. Regulus will not knowingly permit any Other Joint Patent to be abandoned or elect not to file a new patent application claiming priority to a patent application within the Other Joint Patents either before such patent application’s issuance or within the time period required for the filing of an international (i.e., Patent Cooperation Treaty), regional (including European Patent Office) or national application, without AstraZeneca’s written consent or without AstraZeneca otherwise first being given an opportunity to assume full responsibility (at AstraZeneca’s expense) for the continued prosecution and maintenance of such Other Joint Patents, or the filing of such new patent application. In the event that AstraZeneca assumes responsibility for the preparation, filing, prosecution or maintenance of any patent or patent application as set forth above, AstraZeneca will not be liable to Regulus in any way with respect to its handling of, or the results obtained from, the filing, prosecution, issuance, extension or maintenance of such application or any resulting patent or any failure by it to so file, prosecute, extend or maintain. For clarity, the other Party shall not assume full responsibility for the preparation, filing prosecution or maintenance of an entire patent family solely as a result of responsibility for a particular Patent within that patent family transitions to such Party under this Agreement, unless agreed upon, subject to an Intellectual Property Subcommittee review on a case-by-case basis.

Other Joint Patents. Regulus will have the first right, subject to consultation and discussion at the Intellectual Property Sub-committee, but not the obligation, to prepare, file, prosecute and maintain Other Joint Patents, at Regulus’ sole expense and by counsel of its own choice. Regulus, or its outside counsel, will provide AstraZeneca with: (a) a reasonably detailed monthly update of the filing, prosecution and maintenance status for such Other Joint Patent and (b) any further information reasonably requested by AstraZeneca from time to time regarding such Other Joint Patent. Regulus will consider in good faith, and give effect to, all reasonable requests or recommendations of AstraZeneca regarding the preparation, filing, prosecution and maintenance of Other Joint Patents. In the event that ▇▇▇▇▇▇▇ Regulus decides not to pursue or continue the filing, prosecution or maintenance of any Other Joint Patent in any country, Regulus, or its outside counsel, will provide AstraZeneca with written notice of such decision at least 60 days in advance of any relevant filing, prosecution or maintenance deadline, and AstraZeneca will provide Regulus with prompt notice as to whether AstraZeneca desires to assume responsibility and costs for such filing, prosecution or maintenance of such Other Joint Patent. Regulus will not knowingly permit any Other Joint Patent to be abandoned or elect not to file a new patent application claiming priority to a patent application within the Other Joint Patents either before such patent application’s issuance or within the time period required for the filing of an international (i.e., Patent Cooperation Treaty), regional (including European Patent Office) or national application, without AstraZeneca’s written consent or without AstraZeneca otherwise first being given an opportunity to assume full responsibility (at AstraZeneca’s expense) for the continued prosecution and maintenance of such Other Joint Patents, or the filing of such new patent application. In the event that AstraZeneca assumes responsibility for the preparation, filing, prosecution or maintenance of any patent or patent application as set forth above, AstraZeneca will not be liable to Regulus in any way with respect to its handling of, or the results obtained from, the filing, prosecution, issuance, extension or maintenance of such application or any resulting patent or any failure by it to so file, prosecute, extend or maintain. For clarity, the other Party shall not assume full responsibility for the preparation, filing prosecution or maintenance of an entire patent family solely as a result of responsibility for a particular Patent within that patent family transitions to such Party under this Agreement, unless agreed upon, subject to an Intellectual Property Subcommittee review on a case-by-case basis.