Common use of Patent Filing and Prosecution Clause in Contracts

Patent Filing and Prosecution. 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, Lilly exclusively licenses such ASO Composition of Matter Patent Right, or Lilly elects to 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 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 (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the 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 Collaboration.

Patent Filing and Prosecution. Lilly and Isis shall work closely, through their interactions on IGL Pharma will confer with QSAM to develop a strategy for the Executive Committee and the IP Committee, to ensure that, when appropriate, Patent Rights are obtained for inventions arising in the course prosecution of the CollaborationPatents. 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, Lilly exclusively licenses such ASO Composition of Matter Patent Right, or Lilly elects to discontinue such reimbursement pursuant to Section 12.6. Isis QSAM shall be responsible for the cost of searching, preparing, filing, prosecuting and maintaining Patents in all jurisdictions after the Effective Date, however no costs will be due for the expired patents in Patent Rights. IGL Pharma will invoice QSAM for such fees; provided no patent fees shall be charged to QSAM in the initial 90 days after the Effective Date unless specifically agreed by the parties and included in Schedule 9.1 hereto. Schedule 9.1 hereto provides IGL Pharma’s best estimates of all patent fees that will become due in the initial 180 days after the effective Date. If at any time QSAM wishes to cease paying Patent expenses for patent prosecution or maintenance for a patent or patent application in a particular jurisdiction, QSAM must give IGL Pharma at least thirty (30) days prior written notice and QSAM will continue to be obligated to pay for the Patent expenses which reasonably accrue with respect thereto during said notice period. Thereafter, said particular patent application, or patent shall no longer be included as a Patent under this Agreement and QSAM shall have no further rights thereto. IGL Pharma shall not be obligated to file, prosecute or maintain any patent or patent application if QSAM is in default or late with respect to any undisputed Patent expenses or other payments or obligations hereunder and IGL Pharma has notified QSAM of such late payment in accordance with the terms of this Agreement. IGL Pharma will provide QSAM with a copy of any applications, amendments, correspondence, or other materials for which QSAM has paid any costs of searching, preparing, filing, prosecuting, maintaining and taking such other actions or maintaining, as are reasonably necessary well as copies of any documents received or appropriate with respect to the Isis Collaboration Patent Rights and the Isis Patent Rightsfiled during prosecution thereof. 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 IGL Pharma will keep QSAM informed of the Parties as being filing and progress of all material aspects of 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 prosecution of any patents and patent applications under the Patents, including without limitation any plans to changes in the scope or status of such patents and patent applications or plans to abandon any such patent or patent application. If at any time IGL Pharma wishes to withdraw or abandon a patent or patent application that first discloses an invention arising in under the course of the Collaboration or any Collaboration Know-How, prior to filing the first of such applications Patents in any jurisdiction, for review and comment by the IP Committee. Each Party shall keep the other Party continuously informed of all 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 IGL Pharma must give QSAM at least thirty (30) days of receipt. Each Party shall endeavor in good faith prior written notice and, upon request by QSAM, will assign such patent or patent application to coordinate its efforts with those of the other Party to minimize or avoid interference with the prosecution of the other Party's patent applicationsQSAM at no additional charge. The Executive Committee shall review Parties agree that they share a common legal interest to get valid enforceable patents and have oversight responsibility for that each Party will keep all patent matters pertaining privileged information received pursuant to the Collaborationthis Section strictly confidential.

Patent Filing and Prosecution. Lilly and Isis shall work closely5.1 MDC remains owner of the PATENT RIGHTS, through their interactions on the Executive Committee and the IP Committee, to ensure that, when appropriate, Patent Rights are obtained for inventions arising patent records remain in the course name of MDC as applicant. MDC shall diligently file, prepare, prosecute, and maintain the CollaborationPATENT RIGHTS (collectively “PATENT PROSECUTION”) within its reasonable discretion using qualified intellectual property counsel of MDC’s choice. Each Party shall use MDC and its commercially outside counsel will provide FATE reasonable efforts in filing advance opportunities to advise MDC, and prosecuting Patent Rights claiming inventions arising in the course of the Collaboration under this Section 12.3. With MDC agrees to cooperate with FATE, with respect to inventions arising PATENT PROSECUTION as pertinent to the FIELD and FATE’s respective suggestions and requests will be reasonably considered and included unless MDC reasonably concludes in good faith that they are not beneficial to the course of PATENT RIGHTS. Notwithstanding the Collaboration, and when appropriateforegoing, the Parties shall file patent agree that MDC has the final decision-making authority with respect to any dispute on PATENT PROSECUTION, provided however that MDC will file, prosecute, and maintain continuation and divisional applications containing ASO Compound composition of matter claims and claims directed pertaining to the use LICENSED PRODUCTS as FATE reasonably requests in the National Filing Jurisdictions of such ASO Compound (each, an "ASO COMPOSITION OF MATTER PATENT RIGHT"PCT patent application [***]. MDC’s patent attorney(s) separately from will directly copy FATE on all patent applications containing all other claims, including, without limitation, non-ASO Compound composition of matter claims and claims directed correspondence related to the use PATENT RIGHTS, and MDC shall keep FATE timely informed with regard to all patent filings and prosecution actions. 5.2 (a) PATENT PROSECUTION [***]; and further provided that if FATE requests that MDC file, prosecute or maintain the PATENT RIGHTS in any country outside of the National Filing Jurisdictions of PCT patent application [***] and MDC does not wish to file, prosecute or maintain the PATENT RIGHTS in such non-ASO Compoundcountry, MDC agrees to file, prosecute or maintain the PATENT RIGHTS in such country at FATE’s cost. Lilly shall FATE may elect not be responsible to pay for reimbursement under Section 12.6 of any of Isis' external costs of filingfees or expenditures for any patent rights within PATENT RIGHTS, prosecutingor for any patent rights in a given country within PATENT RIGHTS, 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 license granted to a Drug Discovery Target until such time as either such Target ceases to be a Drug Discovery Target FATE for purposes of this Agreement, Lilly exclusively licenses such ASO Composition of Matter Patent Rightthose patent applications or patents in PATENT RIGHTS, or Lilly elects to discontinue for such reimbursement pursuant to Section 12.6. Isis shall be responsible for preparingpatent rights in such applicable country, 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 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 (30) days of receipt. Each Party shall endeavor in good faith to coordinate its efforts with those of the 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 Collaborationwill terminate.