Common use of Patent Filing and Prosecution Clause in Contracts

Patent Filing and Prosecution. 5.1 Upon signature of this Agreement, INVENTORS will promptly disclose to HEMEX all information (collectively, the "INFORMATION") in its possession pertaining to the filed patent applications under SUBJECT PATENTS which may be necessary or useful for prosecuting such patent applications for the protection of INVENTIONS. HEMEX will, upon receipt of the INFORMATION: accept liaison and financial responsibility for prosecution by a patent attorney nominated by HEMEX and approved by INVENTORS of the application to allowance or through necessary appeal from a final rejection by an examiner of the United States Patent and Trademark Office; and reimburse INVENTORS for the costs involved in filing the UTILITY PATENT APPLICATION and PCT INTERNATIONAL APPLICATION, the costs not to exceed seven thousand dollars ($7000). INVENTORS will thereafter from time to time supply HEMEX with additional information as may be necessary or desirable to facilitate prosecution and preparation of patent applications on INVENTIONS. 5.2 In. addition to the patent applications identified in Article 5.1, HEMEX shall have the right to identify INVENTIONS that may be the subject of additional US Patent applications. HEMEX shall also have the right to identify INVENTIONS that may be the subject of foreign patent applications. HEMEX shall have liaison and financial responsibility during the TERM for preparation, filing and prosecution of any such patent applications, and maintenance of any patent granted thereon, using a patent attorney nominated by HEMEX and approved by INVENTORS. 5.3 HEMEX will provide INVENTORS with copies of applications filed in the United States or foreign patent offices, any papers received from the United States or foreign patent offices pertaining to such applications, and any papers filed in the United States or foreign patent offices pertaining to such applications. Any written comments on prosecution of such applications received from INVENTORS shall be provided to the patent attorney referenced in Articles 5.1 and 5. 5.4 HEMEX shall not abandon any patent application under SUBJECT PATENTS, nor permit any granted patent under SUBJECT PATENTS to lapse prior to its full patent term, without first providing INVENTORS with the opportunity to assume financial and patent liaison responsibility for such application or patent. Any such application or patent under SUBJECT PATENTS for which INVENTORS assume responsibility under this Section 5.4 shall revert to INVENTORS and HEMEX shall execute and deliver to INVENTORS any and all assignments and other documents necessary to effect such reversion and transfer, except as otherwise provided in Article 6 Agreement upon a termination hereof.

Patent Filing and Prosecution. 5.1 Upon signature Lilly and Isis shall work closely, through their interactions on the Executive Committee and the IP Committee, to ensure that, when appropriate, Patent Rights are obtained for inventions arising in the course of the Collaboration. Each Party shall use its commercially reasonable efforts in filing and prosecuting Patent Rights claiming inventions arising in the course of the Collaboration under this Section 12.3. With respect to inventions arising in the course of the Collaboration, and when appropriate, the Parties shall file patent applications containing ASO Compound composition of matter claims and claims directed to the use of such ASO Compound (each, an "ASO Composition of Matter Patent Right") separately from patent applications containing all other claims, including, without limitation, non-ASO Compound composition of matter claims and claims directed to the use of such non-ASO Compound. Lilly shall not be responsible for reimbursement under Section 12.6 of any of Isis' external costs of filing, prosecuting, maintaining and extending any ASO Composition of Matter Patent Right solely owned by Isis unless such ASO Composition of Matter Patent Right is exclusively licensed to Lilly under Article 8 in which case the terms of Section 12.6 shall apply; provided, however, that the Parties shall reimburse [***] of Isis' external costs of filing, prosecuting, maintaining and extending ASO Composition of Matter Patent Rights claiming Drug Discovery ASO Compounds and/or the use of Drug Discovery ASO Compounds directed to a Drug Discovery Target until such time as either such Target ceases to be a Drug Discovery Target for purposes of this Agreement, INVENTORS will promptly disclose Lilly exclusively licenses such ASO Composition of Matter Patent Right, or Lilly elects to HEMEX discontinue such reimbursement pursuant to Section 12.6. Isis shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Isis Collaboration Patent Rights and the Isis Patent Rights. Lilly shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Lilly Collaboration Patent Rights. The Executive Committee shall designated one of the Parties as being the responsible Party for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the Joint Collaboration Patent Rights. Each Party shall provide the IP Committee with a copy of any patent application that first discloses an invention arising in the course of the Collaboration or any Collaboration Know-How, prior to filing the first of such applications in any jurisdiction, for review and comment by the IP Committee. Each Party shall keep the other Party continuously informed of all information significant matters relating to the preparation, filing, prosecution and maintenance of Collaboration Patent Rights. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (collectively, 30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the "INFORMATION") in its possession other Party to minimize or avoid interference with the prosecution of the other Party's patent applications. The Executive Committee shall review and have oversight responsibility for all patent matters pertaining to the filed patent applications under SUBJECT PATENTS which may be necessary or useful for prosecuting such patent applications for the protection of INVENTIONS. HEMEX will, upon receipt of the INFORMATION: accept liaison and financial responsibility for prosecution by a patent attorney nominated by HEMEX and approved by INVENTORS of the application to allowance or through necessary appeal from a final rejection by an examiner of the United States Patent and Trademark Office; and reimburse INVENTORS for the costs involved in filing the UTILITY PATENT APPLICATION and PCT INTERNATIONAL APPLICATION, the costs not to exceed seven thousand dollars ($7000). INVENTORS will thereafter from time to time supply HEMEX with additional information as may be necessary or desirable to facilitate prosecution and preparation of patent applications on INVENTIONSCollaboration. 5.2 In. addition to the patent applications identified in Article 5.1, HEMEX shall have the right to identify INVENTIONS that may be the subject of additional US Patent applications. HEMEX shall also have the right to identify INVENTIONS that may be the subject of foreign patent applications. HEMEX shall have liaison and financial responsibility during the TERM for preparation, filing and prosecution of any such patent applications, and maintenance of any patent granted thereon, using a patent attorney nominated by HEMEX and approved by INVENTORS. 5.3 HEMEX will provide INVENTORS with copies of applications filed in the United States or foreign patent offices, any papers received from the United States or foreign patent offices pertaining to such applications, and any papers filed in the United States or foreign patent offices pertaining to such applications. Any written comments on prosecution of such applications received from INVENTORS shall be provided to the patent attorney referenced in Articles 5.1 and 5. 5.4 HEMEX shall not abandon any patent application under SUBJECT PATENTS, nor permit any granted patent under SUBJECT PATENTS to lapse prior to its full patent term, without first providing INVENTORS with the opportunity to assume financial and patent liaison responsibility for such application or patent. Any such application or patent under SUBJECT PATENTS for which INVENTORS assume responsibility under this Section 5.4 shall revert to INVENTORS and HEMEX shall execute and deliver to INVENTORS any and all assignments and other documents necessary to effect such reversion and transfer, except as otherwise provided in Article 6 Agreement upon a termination hereof.

Patent Filing and Prosecution. 5.1 Upon signature of 4.1 Subject to the requirements, limitations and conditions set forth in this Agreement, INVENTORS will promptly disclose PA shall have the exclusive right, power, and authority to HEMEX control: (i) the preparation, filing, and prosecution of any and all information (collectivelyUnited States and foreign patent applications connected with the Licensed Technology, the "INFORMATION") in its possession pertaining PA System, and any Improvements to the filed foregoing which are not Authorized Licensee Improvements (as defined in Section 10.1 hereinbelow), defined below (including any interferences and foreign oppositions), and (ii) the maintenance and enforcement of any and all patents issuing from (i) above or (iii) any Authorized Licensee Improvements which Licensee fails to file, prosecute or protect as described below in this Section 4.1. Subject to the requirements, limitations and conditions set forth in this Agreement, during the Term Licensee shall have the exclusive right, power, and authority to control: (x) the preparation, filing, and prosecution of any and all patent applications under SUBJECT PATENTS worldwide which may be necessary arise out of or useful for prosecuting such patent applications for are connected with any Authorized Licensee Improvement, and (y) the protection maintenance and enforcement of INVENTIONS. HEMEX willany and all patents issuing therefrom worldwide; provided, upon receipt of the INFORMATION: accept liaison and financial responsibility for prosecution by a patent attorney nominated by HEMEX and approved by INVENTORS of the application to allowance or through necessary appeal from a final rejection by an examiner of the United States Patent and Trademark Office; and reimburse INVENTORS for the costs involved in filing the UTILITY PATENT APPLICATION and PCT INTERNATIONAL APPLICATIONhowever, the costs not to exceed seven thousand dollars ($7000). INVENTORS will thereafter from time to time supply HEMEX with additional information as may be necessary or desirable to facilitate prosecution and preparation of patent applications on INVENTIONS. 5.2 In. addition to the patent applications identified in Article 5.1, HEMEX that PA shall have the right to identify INVENTIONS approve all such filings or prosecution in writing in advance of making any filings or taking such action (as applicable), such approval not to be unreasonably withheld. PA shall be provided drafts of all such filings no later than thirty (30) days prior to the proposed filing date, and Licensee shall implement reasonable requests made by PA with regard to the preparation, filing, prosecution and/or maintenance of any patent applications and/or patents with respect to any Authorized Licensee Improvements in any jurisdiction within the Territory. Licensee agrees that it shall not surrender patentable subject matter or narrow claim scope so as to avoid overlap with other technologies of Licensee or its Affiliates. Licensee shall, at the request of PA, file, prosecute, and maintain patent applications and patents, as the case may be be, in those foreign countries within the subject Territory designated by PA. In the event that Licensee does not, within thirty (30) days following written request from PA, exercise its right to prepare, file or prosecute any patent applications in connection with any Authorized Licensee Improvement pursuant to the terms of additional US Patent applications. HEMEX clause (x) above or maintain or enforce any patents in connection with any Authorized Licensee Improvement pursuant to the terms of clause (y) above, PA shall also have the right to identify INVENTIONS take such action, and upon completion of such action, Licensee agrees that may be the subject of foreign patent applications. HEMEX PA shall have liaison the sole and financial responsibility during exclusive right, title and interest in such Authorized Licensee Improvement, and Licensee shall, upon request from PA, execute and deliver such instruments and take such actions are reasonably necessary in order to transfer to PA, or as the TERM for preparationcase may be, filing establish legal title and interest of such Authorized Licensee Improvement in and to PA. Each party shall pay its own legal fees and out-of-pocket expenses associated with any of the activities of either party described in this Section 4.1, except as described herein, but including, without limitation, the prosecution of any such patent applications, and maintenance of all patents included in the Licensed Technology or any patent granted thereon, using a patent attorney nominated by HEMEX and approved by INVENTORSLicensee Improvements. 5.3 HEMEX will provide INVENTORS 4.2 Promptly after the Effective Date and from time to time in accordance with copies the terms of applications filed in the United States or foreign patent officesthis Agreement and thereafter, any papers received from the United States or foreign patent offices pertaining to such applicationsLicensee, and any papers filed in the United States or foreign patent offices pertaining its Affiliates, shall disclose to such applications. Any written comments on prosecution of such applications received from INVENTORS shall be provided PA all inventions, technical data, information, and materials relating to the patent attorney referenced in Articles 5.1 and 5Licensed Technology or the PA System that could reasonably be considered Licensee Improvements. 5.4 HEMEX shall not abandon any patent application under SUBJECT PATENTS, nor permit any granted patent under SUBJECT PATENTS to lapse prior to its full patent term, without first providing INVENTORS with the opportunity to assume financial and patent liaison responsibility for such application or patent. Any such application or patent under SUBJECT PATENTS for which INVENTORS assume responsibility under this Section 5.4 shall revert to INVENTORS and HEMEX shall execute and deliver to INVENTORS any and all assignments and other documents necessary to effect such reversion and transfer, except as otherwise provided in Article 6 Agreement upon a termination hereof.

Patent Filing and Prosecution. 5.1 Upon signature of 4.1 Subject to the requirements, limitations and conditions set forth in this Agreement, INVENTORS will promptly disclose PA shall have the exclusive right, power, and authority to HEMEX control: (i) the preparation, filing, and prosecution of any and all information (collectivelyUnited States and foreign patent applications connected with the Licensed Technology, the "INFORMATION") in its possession pertaining PA System, and any Improvements to the filed foregoing which are not Authorized Licensee Improvements (as defined in Section 10.1 hereinbelow), defined below (including any interferences and foreign oppositions), and (ii) the maintenance and enforcement of any and all patents issuing from (i) above or any Authorized Licensee Improvements which Licensee fails to file, prosecute or protect as described below in this Section 4.1. Subject to the requirements, limitations and conditions set forth in this Agreement, during the Term Licensee shall have the exclusive right, power, and authority to control: (x) the preparation, filing, and prosecution of any and all patent applications under SUBJECT PATENTS worldwide which may be necessary arise out of or useful for prosecuting such patent applications for are connected with any Authorized Licensee Improvement, and (y) the protection maintenance and enforcement of INVENTIONS. HEMEX willany and all patents issuing therefrom worldwide; provided, upon receipt of the INFORMATION: accept liaison and financial responsibility for prosecution by a patent attorney nominated by HEMEX and approved by INVENTORS of the application to allowance or through necessary appeal from a final rejection by an examiner of the United States Patent and Trademark Office; and reimburse INVENTORS for the costs involved in filing the UTILITY PATENT APPLICATION and PCT INTERNATIONAL APPLICATIONhowever, the costs not to exceed seven thousand dollars ($7000). INVENTORS will thereafter from time to time supply HEMEX with additional information as may be necessary or desirable to facilitate prosecution and preparation of patent applications on INVENTIONS. 5.2 In. addition to the patent applications identified in Article 5.1, HEMEX that PA shall have the right to identify INVENTIONS approve all such filings or prosecution in writing in advance of making any filings or taking such action (as applicable), such approval not to be unreasonably withheld. PA shall be provided drafts of all such filings no later than thirty (30) days prior to the proposed filing date, and Licensee shall implement reasonable requests made by PA with regard to the preparation, filing, prosecution and/or maintenance of any patent applications and/or patents with respect to any Authorized Licensee Improvements in any jurisdiction within the Territory. Licensee agrees that it shall not surrender patentable subject matter or narrow claim scope so as to avoid overlap with other technologies of Licensee or its Affiliates. Licensee shall, at the request of PA, file, prosecute, and maintain patent applications and patents, as the case may be be, in those foreign countries within the subject Territory designated by PA. In the event that Licensee does not within 60 days following written request from PA, exercise its right to prepare, file or prosecute any patent applications in connection with any Authorized Licensee Improvement pursuant to the terms of additional US Patent applications. HEMEX clause (x) above or maintain or enforce any patents in connection with any Authorized Licensee Improvement pursuant to the terms of clause (y) above, PA shall also have the right to identify INVENTIONS take such action, and upon completion of such action, Licensee agrees that may be the subject of foreign patent applications. HEMEX PA shall have liaison the sole and financial responsibility during exclusive right, title and interest in such Authorized Licensee Improvement, and Licensee shall, upon request from PA, execute and deliver such instruments and take such actions are reasonably necessary in order to transfer to PA, or as the TERM for preparationcase may be, filing establish legal title and interest of such Authorized Licensee Improvement in and to PA. Each party shall pay its own legal fees and out-of-pocket expenses associated with any of the activities of either party described in this Section 4.1, except as described herein, but including, without limitation, the prosecution of any such patent applications, and maintenance of all patents included in the Licensed Technology or any patent granted thereon, using a patent attorney nominated by HEMEX and approved by INVENTORSLicensee Improvements. 5.3 HEMEX will provide INVENTORS with copies 4.2 Promptly after the Effective Date and from time to time during the Term of applications filed in the United States or foreign patent officesthis Agreement and thereafter, any papers received from the United States or foreign patent offices pertaining to such applicationsLicensee, and any papers filed in the United States or foreign patent offices pertaining its Affiliates, shall disclose to such applications. Any written comments on prosecution of such applications received from INVENTORS shall be provided PA all inventions, technical data, information, and materials relating to the patent attorney referenced in Articles 5.1 Licensed Technology or the PA System that could reasonably be considered Licensee Improvements. Promptly after the Effective Date and 5from time to time during the Term of this Agreement, PA shall disclose to Licensee all PA inventions, technical data, information, and materials relating to the Licensed Technology that could reasonably be considered Improvements. 5.4 HEMEX shall not abandon any patent application under SUBJECT PATENTS, nor permit any granted patent under SUBJECT PATENTS to lapse prior to its full patent term, without first providing INVENTORS with the opportunity to assume financial and patent liaison responsibility for such application or patent. Any such application or patent under SUBJECT PATENTS for which INVENTORS assume responsibility under this Section 5.4 shall revert to INVENTORS and HEMEX shall execute and deliver to INVENTORS any and all assignments and other documents necessary to effect such reversion and transfer, except as otherwise provided in Article 6 Agreement upon a termination hereof.