Common use of Patent Filing Clause in Contracts

Patent Filing. During the Term and thereafter during any period of time during which WCCI shall have a license under this Agreement to Paratek Patent Rights or to Joint Patent Rights, with respect to any Patent Rights arising hereunder: (a) Paratek, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of all Patent Rights relating to the Paratek Technology. At Paratek’s request, WCCI shall reasonably cooperate with and assist Paratek, at Paratek’s expense, in connection with such activities. Portions of this Exhibit, indicated by the ▇▇▇▇ “[***],” were omitted and have been filed separately with the Secretary of the Commission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 406 of the Securities Act of 1933, as amended. (b) WCCI, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of all Patent Rights relating to the WCCI Technology. At WCCI’s request, Paratek shall reasonably cooperate with and assist WCCI, at WCCI’s expense, in connection with such activities. (c) Except as expressly provided in Article 11 hereof, neither Party makes any warranty with respect to the validity, perfection or dominance of any patent or other proprietary right or with respect to the absence of rights in Third Parties which may be infringed by the manufacture or sale of any Product. Each Party agrees to bring to the attention of the other Party any patent or patent application it discovers applicable to the subject matter of this Agreement, which relates to the rights of either Party under this Agreement. (d) Unless the Parties otherwise agree, (i) Paratek, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of Joint Patent Rights outside of the Territory; and (ii) WCCI, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of Joint Patent Rights within the Territory. The Parties shall share equally the control and the fees of counsel and the other costs and expenses related to patents and patent applications claiming inventions that are Joint Technology. Should one Party desire not to share in the control, filing, prosecution or maintenance of any such patent or patent applications or shall fail to bear its share of the costs and expenses of filing, prosecuting or maintaining any such patent or patent applications (and, in the case of such failure, if such failure is not cured within thirty (30) days after receipt of written notice of such failure from the participating Party), the non-participating Party hereby assigns (or shall cause to be assigned) to the other Party all right, title and interest in and to such patent or patent application, and the Joint Technology claimed therein, and the participating Party shall gain sole control of the filing, prosecution or maintenance of such patents or patent applications, which shall be deemed to be the Technology of such participating Party.

Patent Filing. During the Term and thereafter during any period of time during which WCCI shall have a license under this Agreement to Paratek Patent Rights or to Joint Patent Rights, with respect to any Patent Rights arising hereunder: (a) Paratek▇▇▇▇▇▇▇, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of all Patent Rights relating to the Paratek Technology. At Paratek’s request, WCCI shall reasonably cooperate with and assist Paratek▇▇▇▇▇▇▇, at Paratek’s expense, in connection with such activities. Portions of this Exhibit, indicated by the ▇▇▇▇ “[***],” were omitted and have been filed separately with the Secretary of the Commission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 406 of the Securities Act of 1933, as amended. (b) WCCI, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of all Patent Rights relating to the WCCI Technology. At WCCI’s request, Paratek shall reasonably cooperate with and assist WCCI, at WCCI’s expense, in connection with such activities. (c) Except as expressly provided in Article 11 hereof, neither Party makes any warranty with respect to the validity, perfection or dominance of any patent or other proprietary right or with respect to the absence of rights in Third Parties which may be infringed by the manufacture or sale of any Product. Each Party agrees to bring to the attention of the other Party any patent or patent application it discovers applicable to the subject matter of this Agreement, which relates to the rights of either Party under this Agreement. (d) Unless the Parties otherwise agree, (i) Paratek▇▇▇▇▇▇▇, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of Joint Patent Rights outside of the Territory; and (ii) WCCI, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of Joint Patent Rights within the Territory. The Parties shall share equally the control and the fees of counsel and the other costs and expenses related to patents and patent applications claiming inventions that are Joint Technology. Should one Party desire not to share in the control, filing, prosecution or maintenance of any such patent or patent applications or shall fail to bear its share of the costs and expenses of filing, prosecuting or maintaining any such patent or patent applications (and, in the case of such failure, if such failure is not cured within thirty (30) days after receipt of written notice of such failure from the participating Party), the non-participating Party hereby assigns (or shall cause to be assigned) to the other Party all right, title and interest in and to such patent or patent application, and the Joint Technology claimed therein, and the participating Party shall gain sole control of the filing, prosecution or maintenance of such patents or patent applications, which shall be deemed to be the Technology of such participating Party.

Patent Filing. During 7.2.1 Subject to the Term and thereafter during any period of time during which WCCI License Agreements, IMMUNOGEN shall have a license under this Agreement the obligation to Paratek Patent Rights or to Joint Patent Rightsprepare, file, prosecute, obtain and maintain patent applications and patents covering IMMUNOGEN Background Technology, with respect to the expenses for any Patent Rights arising hereunder: (a) Paratek, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible for the such preparation, filing, prosecution and maintenance of all to be borne by IMMUNOGEN. 7.2.2 ABX shall have the right (but not the obligation) to prepare, file, prosecute, obtain and maintain patent applications and patents constituting Research Patent Rights relating to the Paratek Technology. At Paratek’s requestRights, WCCI shall reasonably cooperate with and assist Paratek, at Paratek’s expense, in connection with such activities. Portions of this Exhibit, indicated by the ▇▇▇▇ “[***],” were omitted and have been filed separately with the Secretary of the Commission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 406 of the Securities Act of 1933, as amended. (b) WCCI, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible expenses for the any such preparation, filing, prosecution and maintenance of all Patent Rights relating to be borne by ABX. 7.2.3 Subject to the WCCI Technology. At WCCI’s requestLicense Agreements, Paratek shall reasonably cooperate with as regards any joint invention hereunder (other than Research Inventions, Research Data and assist WCCIResearch Materials), at WCCI’s expense, in connection with such activities. (c) Except as expressly provided in Article 11 hereof, neither the Party makes any warranty with respect to from whom the validity, perfection or dominance of any patent or other proprietary right or with respect to the absence of rights in Third Parties which may be infringed by the manufacture or sale of any Product. Each Party agrees to bring to the attention majority of the other Party data underlying any patent or patent application it discovers applicable such joint invention arose (the “controlling Party”) will have the first right, but not the obligation, to the subject matter of this Agreement, which relates to the rights of either Party under this Agreement. (d) Unless the Parties otherwise agree, (i) Paratek, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filingundertake filing(s), prosecution and maintenance of Joint Patent Rights outside inventorship certificate(s) and patent(s) thereon. In connection with any such filing(s), the controlling Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) and the Parties will, prior to filing of the Territory; and (ii) WCCIpatent application, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of Joint Patent Rights within the Territory. The Parties shall share equally the control and the fees of counsel and the other costs and expenses related to patents and patent applications claiming inventions that are Joint Technology. Should one Party desire not to share in the control, filing, prosecution or maintenance of any such patent or patent applications or shall fail to bear its share agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the controlling Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably in advance of filing, prosecuting and (ii) will keep the non-controlling Party reasonably informed of the status of such filing, prosecution and maintenance, including, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or maintaining filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the controlling Party fails to undertake the filing(s) of any such patent or patent applications application with respect to any such invention within ninety (and, in the case of such failure, if such failure is not cured within thirty (3090) days after receipt of written notice from the other Party that the other Party believes filing(s) of such failure from the participating Party)an application by such Party is appropriate, the non-participating other Party hereby assigns (or shall cause may undertake such filing(s) at its own expense, in which case the controlling Party will assign all of its rights to be assigned) such joint invention to the other Party all and any subsequently issued patent thereon will be owned solely by the other Party. Either Party, in its discretion, may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent to the other Party, who will then have the right, title and interest in and its discretion, to such patent or patent application, and the Joint Technology claimed therein, and the participating Party shall gain sole control of assume the filing, prosecution and/or maintenance thereof as the sole owner thereof and at its sole cost and expense. 7.2.4 Each Party agrees to cooperate reasonably with the other party in the preparation, filing, and prosecution of any patent applications pursuant to this Section 7.2. Such cooperation includes, but is not limited to, executing all papers and instruments, or maintenance requiring its employees or agents to execute such papers and instruments, so as to effectuate the ownership of such patent applications and any patents or patent applications, which shall be deemed thereon and to be enable the Technology filing and prosecution of such participating Partyapplications in any country.

Patent Filing. During 7.2.1 Subject to the Term and thereafter during any period of time during which WCCI License Agreements, IMMUNOGEN shall have a license under this Agreement the obligation to Paratek Patent Rights or to Joint Patent Rightsprepare, file, prosecute, obtain and maintain patent applications and patents covering IMMUNOGEN Background Technology, with respect to the expenses for any Patent Rights arising hereunder: (a) Paratek, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible for the such preparation, filing, prosecution and maintenance of all to be borne by IMMUNOGEN. 7.2.2 ABX shall have the right (but not the obligation) to prepare, file, prosecute, obtain and maintain patent applications and patents constituting Research Patent Rights relating to the Paratek Technology. At Paratek’s requestRights, WCCI shall reasonably cooperate with and assist Paratek, at Paratek’s expense, in connection with such activities. Portions of this Exhibit, indicated by the ▇▇▇▇ “[***],” were omitted and have been filed separately with the Secretary of the Commission pursuant to the Registrant’s application requesting confidential treatment pursuant to Rule 406 of the Securities Act of 1933, as amended. (b) WCCI, at its sole expense and acting through patent attorneys or agents of its choice, shall be responsible expenses for the any such preparation, filing, prosecution and maintenance of all Patent Rights relating to be borne by ABX. 7.2.3 Subject to the WCCI Technology. At WCCI’s requestLicense Agreements, Paratek shall reasonably cooperate with as regards any joint invention hereunder (other than Research Inventions, Research Data and assist WCCIResearch Materials), at WCCI’s expense, in connection with such activities. (c) Except as expressly provided in Article 11 hereof, neither the Party makes any warranty with respect to from whom the validity, perfection or dominance of any patent or other proprietary right or with respect to the absence of rights in Third Parties which may be infringed by the manufacture or sale of any Product. Each Party agrees to bring to the attention majority of the other Party data underlying any patent or patent application it discovers applicable such joint invention arose (the "controlling Party") will have the first right, but not the obligation, to the subject matter of this Agreement, which relates to the rights of either Party under this Agreement. (d) Unless the Parties otherwise agree, (i) Paratek, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filingundertake filing(s), prosecution and maintenance of Joint Patent Rights outside inventorship certificate(s) and patent(s) thereon. In connection with any such filing(s), the controlling Party will use patent counsel mutually acceptable to each Party (in its reasonable determination) and the Parties will, prior to filing of the Territory; and (ii) WCCIpatent application, acting through patent counsel or agents of its choice, shall be responsible for the preparation, filing, prosecution and maintenance of Joint Patent Rights within the Territory. The Parties shall share equally the control and the fees of counsel and the other costs and expenses related to patents and patent applications claiming inventions that are Joint Technology. Should one Party desire not to share in the control, filing, prosecution or maintenance of any such patent or patent applications or shall fail to bear its share agree on mutually acceptable sharing of the costs and expenses of such filing(s), prosecution and maintenance. In any case the controlling Party (i) will provide the non-controlling Party with a copy of any such proposed patent application for review and comment reasonably in advance of filing, prosecuting and (ii) will keep the non-controlling Party reasonably informed of the status of such filing, prosecution and maintenance, including, without limitation, (A) by providing the non-controlling Party with copies of all communications received from or maintaining filed in patent office(s) with respect to such filing, and (B) by providing the non-controlling Party, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that the non-controlling Party has a reasonable opportunity to review and comment. If the controlling Party fails to undertake the filing(s) of any such patent or patent applications application with respect to any such invention within ninety (and, in the case of such failure, if such failure is not cured within thirty (3090) days after receipt of written notice from the other Party that the other Party believes filing(s) of such failure from the participating Party)an application by such Party is appropriate, the non-participating other Party hereby assigns (or shall cause may undertake such filing(s) at its own expense, in which case the controlling Party will assign all of its rights to be assigned) such joint invention to the other Party all and any subsequently issued patent thereon will be owned solely by the other Party. Either Party, in its discretion, may assign its rights hereunder to any jointly owned invention, inventorship certificate, patent application or patent to the other Party, who will then have the right, title and interest in and its discretion, to such patent or patent application, and the Joint Technology claimed therein, and the participating Party shall gain sole control of assume the filing, prosecution or and/or maintenance thereof as the sole owner thereof and at its sole cost and expense. 7.2.4 Each Party agrees to cooperate reasonably with the other party in the preparation, filing, and prosecution of such patents or any patent applications, which shall be deemed applications pursuant to be the Technology of such participating Partythis Section 7.