Common use of Patent Prosecution Clause in Contracts

Patent Prosecution. Patent applications and other means of formal protection shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Party's benefit. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or patent application, then the other Party shall have the right, at its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such patent or patent application. For the purpose of this Section 8.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicable.

Patent Prosecution. Patent The Parties intend to establish broad patent protection for Collaboration Compounds and other patentable inventions arising from the Research. Miles shall supervise and direct patenting of all patentable inventions conceived in the course of and within the scope of the Research and reduced to practice during the Research Term or within one year thereafter by employees of both Parties (the “Inventions”). Miles shall file and prosecute all patent applications covering Inventions. All internal costs and expenses of prosecuting such patent applications covering Inventions shall be borne by [ * ]. All [ * ], for prosecuting such applications on Inventions shall be paid by [ * ] and be [ * ]. Miles shall give Onyx copies of all such applications and other means of formal protection related correspondence, in sufficient time to allow Onyx reasonably to comment thereon. Miles shall maintain all Patents that issue on such applications. The external costs and expenses in relation thereto shall be filed in the joint names of the Parties borne by [ * ] and be [ * ]. [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES EXCHANGE ACT OF 1933, AS AMENDED. Each Party may make its own decision regarding filing and prosecuting applications for Patents on inventions made solely by such Party, except with respect to any such jointly inventions owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Party's benefit. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereofpursuant to Section 20.1(b), in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to for which such patent or patent application, then the other Party shall have the rightright to file and prosecute patent applications. All such applications shall be [ * ]. Prior to such filing, the Parties will consult with each other to facilitate uniformity and efficiency in the filing and prosecution of applications to obtain Patents. Each Party shall be responsible for all costs of prosecuting and maintaining any applications and patents it files hereunder. If a Party decides not to file or maintain an application or patent in any country on an invention hereunder, it shall give the other Party notice to this effect; after that notice, the other Party may, at its expensesexpense, to prosecute file or maintain such application or maintain said patent or patent application. The relinquishing patent, and the first Party agrees, at the other Party's expenses, shall assign to co-operate fully with the such other Party to assist the other Party rights in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such patent application or patent application. For the purpose of this Section 8.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicablepatent.

Patent Prosecution. Patent applications and other means of formal protection shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties Phytera shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the preparation Phytera Patents and filing of any patentable inventions encompassed by Phytera Technology and Phytera Program Technology, excluding jointly invented Program Technology. Lilly shall be responsible for preparing, filing, prosecuting, maintaining and taking such other actions as are reasonably necessary or appropriate with respect to the patent application or other such applicationLilly Patents and any patentable inventions encompassed by Lilly Technology and Lilly Program Technology, which shall include, without limitation, patents which Cover Research Compounds, Closely Related Derivatives and Products and jointly invented Program Technology. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions patent coverage as described in which such protection this Article 4 should be sought and the responsible Party shall prepare, file, prosecute and maintain patents in equalizing accordance with that agreement, subject to the costs involved provisions of Section 4.1(e) below; provided, however, that the responsible Party shall at a minimum be required to seek patent coverage in such protection the United States, Japan and the European Economic Community. To the extent either Party desires to engage external counsel in proportion to each Party's benefit. In case a connection with activities described in this Section 4.1(c), the engaging Party is not or no more interested in participating in a patent or patent application, it shall notify will consult the other Party thereof, in writing, at the earliest practicable date, and with respect to its choice of external patent counsel. Each Party shall forthwith relinquish to also keep the other Party its rights continuously informed of all significant matters relating to such the preparation, filing, prosecution and maintenance of patents and patent or patent application, then applications covered by this Agreement. Each Party shall provide the other Party with copies of any substantial prosecution papers within thirty (30) days of receipt. Each Party shall have endeavor in good faith to coordinate its efforts with those of the right, at its expenses, other Party to prosecute such application minimize or maintain said patent or patent application. The relinquishing Party agrees, at avoid interference with the prosecution of the other Party's expensespatent applications. To the extent practicable, each Party shall provide the Research Team with a copy of any patent application which first discloses any specific Program Technology, prior to co-operate fully with filing the first of such applications in any jurisdiction, for review and comment by the Research Team. Each Party shall minimally provide the other Party with written notice regarding the subject matter within Program Technology that such Party plans to assist the other Party claim in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such a patent application or patent application. For the purpose of this Section 8.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicableprovisional.

Patent Prosecution. Patent applications and other means of formal protection shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rightsprotection, whether pursued by all Parties or by one Party, [* * *]shall be jointly owned by all Parties and all Parties shall be responsible for paying one-half (1/2) of the total cost involved in preparing, filing, prosecuting, issuing and maintaining any such applications and any resulting patents or other protection. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Party's benefitprotection. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or patent application, then the other Party shall have the right, at its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such patent or patent application. For the purpose of this Section 8.4 5.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicable. Derivative IP. All Improvements, modifications or derivatives created by either Party to its own IP Rights or the IP Rights of the other Party (collectively "Derivative IP") during the course of this Agreement, and in accordance with the licenses granted in Section 4 ("Licensing of IP Rights") above, shall be owned by the owner of the original IP Rights, but shall be licensed to the other Party in accordance with the licenses applicable to the underlying IP Rights as set forth in Section 4 ("Licensing of IP Rights") above.

Patent Prosecution. Patent applications and other means of formal protection (i) One party (the "Prosecuting Party") shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which have the first right to pursue patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdictionJoint Innovations, and the other Parties shall party (the "Non-Prosecuting Party") agrees to take reasonable action to cooperate with the Prosecuting Party seeking in this regard. The Prosecuting Party for each Joint Innovation shall be mutually determined in accordance with the factors listed below in order of priority: (A) if a Joint Innovation is an improvement to, or is based on or derived from, predominantly one party's patent rights and/or other intellectual property, then such protectionparty shall be the Prosecuting Party; and (B) except as set forth in (A) above, if one party is prosecuting or has prosecuted a related patent application which provides a basis for priority for all or part of a Joint Innovation, then such party shall be the Prosecuting Party. Unless otherwise agreedIf the parties cannot agree on the Prosecuting Party based on the foregoing, all then each party shall retain its rights under applicable law to pursue patent or other intellectual property protection for the subject Joint Innovation at its sole expense. The Prosecuting Party shall have the first right to file, prosecute and maintain patent applications or other formal protection and patents for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]a Joint Innovation. The Parties Non-Prosecuting Party shall consult with each other no less than once per calendar year promptly reimburse the Prosecuting Party for one-half (1/2) of the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Prosecuting Party's benefit. In case a out-of-pocket expenses in connection with such activities as they are incurred, provided that if the Non-Prosecuting Party is so notifies the Prosecuting Party in writing that it does not or no more interested in participating in a wish to reimburse the Prosecuting Party for such expenses, then the Non-Prosecuting Party shall (A) not be responsible for any further costs under this Section 9.4(a) (Patent Prosecution) related to any patent or patent application, it shall notify the other Party thereofin which case all right, title and interest in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or application (as the case may be) and any patents issuing thereon shall be solely owned by the Prosecuting Party, and (B) receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. (ii) In the event the Prosecuting Party fails or declines to take such actions to pursue patent applicationprotection with respect to any Joint Innovation in accordance with this Section 9.4(a) (Patent Prosecution), then the other Non-Prosecuting Party shall have the right to file, prosecute and maintain such patent applications or patents at its sole expense, in which case all right, at its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing to such patent or patent applicationapplication (as the case may be) and any patents issuing thereon shall be solely owned by the Non-Prosecuting Party and the Prosecuting Party shall receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. For The Prosecuting Party shall notify the purpose of this Section 8.4 "joint" ownership Non-Prosecuting Party at least [*] days (or such shorter period as is reasonably practicable for deadlines not extendable beyond [ * ] days) prior to the date the next action or filing is due to be taken with respect to inventions and copyrights shall be defined in accordance a Joint Innovation or a patent application or patent for a Joint Innovation, if the Prosecuting Party does not intend to take any of the foregoing actions with the then-current United States respect to such Joint Innovation or such patent law application or copyright law, as applicablepatent.

Patent Prosecution. (a) The Parties expect that patent applications will be filed and maintained as required to secure the Collaboration Patent applications Rights. Celera, with reasonable and timely input from Isis, will be responsible for filing, prosecuting and/or maintaining the Celera Exclusive Collaboration Patents throughout the world. Isis with reasonable and timely input from Celera, will be responsible for filing, prosecuting and/or maintaining the Collaboration Patents other means than Celera Exclusive Collaboration Patents throughout the world. Celera and Isis will share equally the costs of formal protection filing, prosecuting and/or maintaining such Patent Rights. Notwithstanding the above, either Party may decline to pay its share of the costs for filing, prosecuting and/or maintaining any Collaboration Patent(s) (a "Declining Party"), in which case such Declining Party will notify the other Party promptly in writing and in good time to enable the other Party to meet any applicable deadlines, and the other Party will have the right, but not the obligation, to undertake the responsibility for filing, prosecuting and/or maintaining such Collaboration Patents at its own expense, and the Declining Party will reasonably cooperate with and assist the other Party therein. A Declining Party will maintain its license under such Collaboration Patent pursuant to Article 4, except that any right to grant sublicenses therein (other than the sublicensing rights set forth in Sections 4.3(a) 4.3(b)), and any right to receive Licensing Revenue pursuant to Section 7.2 under such Collaboration Patents, will terminate as of the date a Declining Party provides such written notice. Such terminated sublicense rights shall be filed in granted to the joint names other Party, provided such other Party has exercised its right of filing, prosecuting and/or maintaining such Collaboration Patents. (b) The Parties anticipate that there may be Joint Patents that arise out of the Parties with respect to any Collaboration (that do not constitute Collaboration Patents or Oligonucleotide Patents). To the extent that such jointly owned IP Rights which a Joint Patent represents an improvement of one Party's technology and not the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involvedother, the Parties shall jointly Party whose technology is improved will have the sole right and responsibility, at its own expense, to prosecute and maintain such Joint Patent. To the extent that such a Joint Patent either represents an improvement to both Party's technology or does not improve either Party's technology, the Intellectual Property Committee will determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall will be responsible for the preparation prosecution, maintenance, enforcement and filing defense of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall Patent and what procedures will be filed and which of put in place for coordination among the Parties shall including, without limitation, cost-sharing and input. (c) Isis will be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Party's benefit. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or patent application, then the other Party shall have the rightsolely responsible, at its expensesown expense, to prosecute such application or maintain said patent or patent application. The relinquishing Party agreesfor prosecution, at the other Party's expensesmaintenance, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title defense and interest in the application)`, maintaining, defending and renewing such patent or patent application. For the purpose enforcement of this Section 8.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicableany Oligonucleotide Patents.

Patent Prosecution. Patent applications and other means of formal protection shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdiction, and the other Parties shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rightsprotection, whether pursued by all Parties or by one Party, [* * *]shall be jointly owned by all Parties and all Parties shall be responsible for paying one-half (1/2) of the total cost involved in preparing, filing, prosecuting, issuing and maintaining any such applications and any resulting patents or other protection. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Party's benefitprotection. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or patent application, then the other Party shall have the right, at its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such patent or patent application. For the purpose of this Section 8.4 5.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicable.

Patent Prosecution. Patent applications and 8.3.1 Each party shall promptly notify the other means upon the making, conceiving or reducing to practice of formal protection shall be filed any invention or discovery referred to in the joint names of the Parties with Section 8.1. With respect to any such invention, 8.3.1.1 BI shall have the first right, using in-house or its usual outside legal counsel, to prepare, file, prosecute, maintain and extend patent applications and patents concerning all such inventions and discoveries made jointly by BI and VP, in countries of BI's choice throughout the world; provided BI shall use reasonable efforts to obtain patent protection in the United States, under the European Patent Convention and in Japan. VP shall be designated as a joint owner on jointly owned IP Rights which the Parties jointly deem inventions. BI shall bear all costs and expenses with respect to be worthy of seeking any such protectionpreparation, filing, prosecution, maintenance and extension. Consistent with the laws BI shall solicit VP's advice and review of the countries involvednature and text of any joint patent applications and prosecution matters related thereto in reasonably sufficient time prior to filing thereof, the Parties and BI shall jointly determine the country take into account VP's comments related thereto. 8.3.1.2 Each of jurisdiction within which BI and VP shall have the first right, using in-house or outside legal counsel selected at their respective sole discretion, to prepare, file, prosecute, maintain and extend patent application or other applications and patents concerning all such protection shall be filed and, which of the Parties shall be responsible for the preparation inventions and filing of the patent application or other discoveries owned in whole by such application. The Parties shall also jointly determine which other party in countries of jurisdictions any such application shall be filed and which of party's choice throughout the Parties shall be responsible world, for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application party shall be filedbear all costs and expenses. 8.3.2 If either party to this Agreement elects not to file, either Party may, on its own, seek prosecute or maintain such patent PATENT applications or other protection ensuing PATENTS or claims encompassed by such PATENT applications or ensuing PATENTS in any desired country country, each party shall give the other party notice thereof within a reasonable period prior to allowing such PATENT applications or jurisdictionPATENTS or such certain claims encompassed by such PATENT applications or PATENTS to lapse or become abandoned or unenforceable, and the other Parties party shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Party's benefit. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereof, in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or patent application, then the other Party shall thereafter have the right, at its expensessole expense, to prepare, file, prosecute and maintain PATENT applications and PATENTS or divisional applications related to such application claims encompassed by such PATENT applications or maintain said patent PATENTS concerning all such inventions and discoveries in countries of its choice throughout the world. 8.3.3 In the event of the institution of any suit by a THIRD PARTY against BI, VP or patent applicationa sublicensee for PATENT infringement involving the manufacture, use, sale, distribution or marketing of PRODUCTS, the party sued shall promptly notify the other party in writing. BI and VP shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 8.3.4 If either party declines to continue a PATENT effort and the other party elects to continue a PATENT effort at its cost, the declining party shall grant exclusive rights to the electing party and shall transfer its rights in the Joint PATENT Right in question and associated Joint Technology to the electing party. The relinquishing Party agreescost of any such exclusivity or transfer shall be borne by the electing party. Prior to such transfer a joint owner shall not exercise its joint ownership rights or undivided interest outside the specific licensing provisions as set forth hereinabove. 8.3.5 Notwithstanding the provisions of Section 8.3.1.1, each party shall, at its own expense, provide reasonable assistance to the other Party's expensesparty to facilitate filing of all PATENT applications covering inventions referred to in Section 8.1 and shall execute all documents deemed necessary or desirable therefor. 8.3.6 In the event of the institution of any suit by a THIRD PARTY against BI, to co-operate fully with VP or their sublicensees for PATENT infringement involving the DISCOVERY, the party sued shall promptly notify the other Party to assist the other Party party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such patent or patent application. For the purpose of this Section 8.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicablewriting.

Patent Prosecution. Patent applications Each Party ("the filing Party") may, at its sole discretion, file, prosecute, maintain and other means defend against opposition proceedings the Program Patents it owns in such countries as the filing Party shall determine. During the term of formal protection shall be filed in this Agreement, the joint names filing Party shall, at the reasonable request and expense of the Parties with other Party, file for such Program Patents in such countries as the other Party deems necessary to protect its rights under this Agreement, but the rights under such Program Patents shall continue to be owned by the originally filing Party. With respect to any such jointly jointly-owned IP Rights which Program Patents or Know-how, the owners shall cooperate to file, prosecute, maintain, abandon (where the Parties agree it would be necessary and appropriate to protect trade secret rights), and defend against opposition proceedings such Program Patents jointly deem to be worthy of seeking any such protectionand share or bear the cost thereof as they may agree. Consistent with The filing Party shall keep the laws other Party apprised of the countries involvedstatus of each Program Patent and shall give reasonable consideration to any suggestions or recommendations of the other Party concerning the preparation, filing, prosecution, maintenance and defense thereof. If, during the term of this Agreement, the Parties shall jointly determine filing Party intends to allow any Program Patent to lapse or become abandoned without having first filed a substitute, the country filing Party shall, whenever practicable, notify the other Party of jurisdiction within which such intention at least sixty (60) days prior to the first patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree date upon the countries or jurisdictions within which such application Program Patent shall be filed, either Party may, on its own, seek such patent lapse or other protection in any desired country or jurisdictionbecome abandoned, and the other Parties Party shall cooperate with the Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]. The Parties shall consult with each other no less than once per calendar year thereupon be entitled to assume responsibility for the purpose of identifying jointly owned IP Rights for which protection should be soughtprosecution, the countries of jurisdictions in which such protection should be sought maintenance and in equalizing the costs involved in such protection in proportion to each Party's benefit. In case a Party is not or no more interested in participating defense thereof in a patent or patent applicationparticular jurisdiction (unless the filing Party reasonably determines to abandon the Program Patent in order to protect its trade secrets), it but such actions shall notify not act to transfer any rights beyond those expressly set out herein, except that if the other Party thereofassumes such responsibility it shall be entitled to a non-exclusive, in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights royalty-free license only to such patent or patent application, then the other Party shall have the right, at its expenses, to prosecute Program Patent and only in such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing such patent or patent application. For the purpose of this Section 8.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicablejurisdiction.

Patent Prosecution. Patent applications (a) As between the Parties, (i) Zai shall have the first right to file, prosecute and maintain (1) any Licensed Product Patents, including those identified as such in Exhibit A, [***]. (b) For clarification, any Licensed Patents that claim [***] will not fall into the condition of item (i)(1) or item (i)(2) of Section 5.2(a). MediLink shall have the first right to file, prosecute and maintain such Licensed Patents [***]. (c) Each Party shall consult with the other means Party and keep the other Party reasonably informed of formal protection the status of the Licensed Patents and shall be filed provide the other Party with all material correspondence received from any patent authority in the joint names Territory in connection therewith, provided that such provision of correspondence shall not be more than [***]. In addition, each prosecuting Party shall promptly provide the Parties other Party with drafts of all proposed material filings and correspondence to any patent authority in the Territory with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which the first patent application or other such protection shall be filed and, which of the Parties shall be responsible Licensed Patents for the preparation other Party’s review and filing comment prior to the submission of the patent application or other such applicationproposed filings and correspondences. The Parties prosecuting Party shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection consider in any desired country or jurisdiction, and good faith the other Parties shall cooperate with the Party’s comments prior to submitting such filing and correspondences. (d) Each Party seeking such protection. Unless otherwise agreed, all patent applications or other formal protection for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]. The Parties shall consult with each other no less than once per calendar year for the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Party's benefit. In case a Party is not or no more interested in participating in a patent or patent application, it shall notify the other Party thereofof any decision to cease prosecution or maintenance of any Licensed Patents that such Party has the first right to prosecute or maintain. Such Party shall provide such notice at least [***] prior to any filing or payment due date, or any other due date that requires action, in writingconnection with such Licensed Patent. In such event, at upon the earliest practicable dateother Party’s request, such Party shall transfer the prosecution and shall forthwith relinquish maintenance of such Licensed Patents in the Territory to the other Party its rights to such patent or patent applicationParty, then and the other Party shall have the right, at its expenses, right to prosecute continue prosecution or maintenance of such application or maintain said patent or patent application. The relinquishing Party agrees, Licensed Patents in the Territory at the other Party's expenses, to co-operate fully with ’s own expense. (e) Each Party shall provide the other Party to assist all reasonable assistance and cooperation in the patent prosecution efforts under this Section 5.2, including (i) providing any information required for such prosecution as reasonably requested by the other Party in obtaining (by assigning all its rights title if applicable); and interest in the application)`, maintaining, defending (ii) providing any necessary powers of attorney and renewing executing any other required documents or instruments for such patent or patent application. For the purpose of this Section 8.4 "joint" ownership with respect to inventions and copyrights shall be defined in accordance with the then-current United States patent law or copyright law, as applicableprosecution.

Patent Prosecution. Patent applications and other means of formal protection (i) One party or its designee (the "Prosecuting Party") shall be filed in the joint names of the Parties with respect to any such jointly owned IP Rights which the Parties jointly deem to be worthy of seeking any such protection. Consistent with the laws of the countries involved, the Parties shall jointly determine the country of jurisdiction within which have the first right to pursue patent application or other such protection shall be filed and, which of the Parties shall be responsible for the preparation and filing of the patent application or other such application. The Parties shall also jointly determine which other countries of jurisdictions any such application shall be filed and which of the Parties shall be responsible for such other filing. If the Parties cannot agree as to whether a particular jointly owned IP Rights should be the subject of patent or other formal protection, or cannot agree upon the countries or jurisdictions within which such application shall be filed, either Party may, on its own, seek such patent or other protection in any desired country or jurisdictionJoint Innovations, and the other Parties shall party or its designee (the "Non-Prosecuting Party") agrees to take reasonable action to cooperate with the Prosecuting Party seeking in this regard. The Prosecuting Party for each Joint Innovation shall be mutually determined in accordance with the factors listed below in order of priority: (A) if a Joint Innovation is an improvement to, or is based on or derived from, predominantly one party's patent rights and/or other intellectual property, then such protectionparty shall be the Prosecuting Party; and (B) except as set forth in (A) above, if one party is prosecuting or has prosecuted a related patent application which provides a basis for priority for all or part of a Joint Innovation, then such party shall be the Prosecuting Party. Unless otherwise agreedIf the parties cannot agree on the Prosecuting Party based on the foregoing, all then each party shall retain its rights under applicable law to pursue patent or other intellectual property protection for the subject Joint Innovation at its sole expense. The Prosecuting Party shall have the first right to file, prosecute and maintain patent applications or other formal protection and patents for Jointly Owned IP Rights, whether pursued by all Parties or by one Party, [* * *]a Joint Innovation. The Parties Non-Prosecuting Party shall consult with each other no less than once per calendar year promptly reimburse the Prosecuting Party for one-half (1/2) of the purpose of identifying jointly owned IP Rights for which protection should be sought, the countries of jurisdictions in which such protection should be sought and in equalizing the costs involved in such protection in proportion to each Prosecuting Party's benefit. In case a out-of-pocket expenses in connection with such activities as they are incurred, provided that if the Non-Prosecuting Party is so notifies the Prosecuting Party in writing that it does not or no more interested in participating in a wish to reimburse the Prosecuting Party for such expenses, then the Non-Prosecuting Party shall (A) not be responsible for any further costs under this Section 4.3(a) (Patent Prosecution) related to any patent or patent application, it shall notify the other Party thereofin which case all right, title and interest in writing, at the earliest practicable date, and shall forthwith relinquish to the other Party its rights to such patent or application (as the case may be) and any patents issuing thereon shall be solely owned by the Prosecuting Party, and (B) receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. (ii) In the event the Prosecuting Party fails or declines to take such actions to pursue patent applicationprotection with respect to any Joint Innovation in accordance with this Section 4.3(a) (Patent Prosecution), then the other Non-Prosecuting Party shall have the right to file, prosecute and maintain such patent applications or patents at its sole expense, in which case all right, at its expenses, to prosecute such application or maintain said patent or patent application. The relinquishing Party agrees, at the other Party's expenses, to co-operate fully with the other Party to assist the other Party in obtaining (by assigning all its rights title and interest in the application)`, maintaining, defending and renewing to such patent or patent applicationapplication (as the case may be) and any patents issuing thereon shall be solely owned by the Non-Prosecuting Party and the Prosecuting Party shall receive a perpetual, irrevocable, worldwide, royalty-free license in and to such patent. For The Prosecuting Party shall notify the purpose of this Section 8.4 "joint" ownership Non-Prosecuting Party at least [*] days (or such shorter period as is reasonably practicable for deadlines not extendable beyond [*] days) prior to the date the next action or filing is due to be taken with respect to inventions a Joint Innovation or a patent application ---------- [*] Certain information on this page has been omitted and copyrights shall be defined in accordance filed separately with the then-current United States Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. or patent law for a Joint Innovation, if the Prosecuting Party does not intend to take any of the foregoing actions with respect to such Joint Innovation or copyright law, as applicablesuch patent application or patent.