Common use of Preparation of Proposed Patent List Clause in Contracts

Preparation of Proposed Patent List. Not later than [***] days from the date of receipt by Novartis of the Biosimilar Notice, Novartis shall prepare and provide ImmunoGen with a list (the “Proposed Patent List”) of (i) those patents within the Licensed Patent Rights, if any, that Novartis reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (ii) those patents within the Licensed Patent Rights, if any, that Novartis would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days following the date of receipt by ImmunoGen of the Proposed Patent List and Other Required Information, ImmunoGen and Novartis shall discuss in good faith the Proposed Patent List and the Other Required Information and Novartis shall consider in good faith ImmunoGen’s proposals for changes to the Proposed Patent List and the Other Required Information. Within [***] days following Novartis’ receipt of the Biosimilar Notice, Novartis shall provide the Applicant with a copy of the Proposed Patent List and the Other Required Information; provided, however, that the Proposed Patent List provided to Applicant shall include any patent within the Licensed Patent Rights specified in writing by ImmunoGen for inclusion, absent manifest error.

Preparation of Proposed Patent List. Not later than [***] days from the date of receipt by Novartis ImmunoGen of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis ImmunoGen, with cooperation from CytomX, shall prepare and provide ImmunoGen CytomX with a list (the “Proposed Patent List”) of (i) those patents within the Licensed Patent Rights, if any, Rights that Novartis ImmunoGen reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (ii) those patents within the Licensed Patent Rights, if any, that Novartis ImmunoGen would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen CytomX of the Proposed Patent List List, CytomX and Other Required Information, ImmunoGen and Novartis shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis ImmunoGen shall consider in good faith ImmunoGenCytomX’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within [***] days following Novartis’ receipt Not later than the end of the Biosimilar Noticeperiod specified by Applicable Laws, Novartis ImmunoGen shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that ImmunoGen shall incorporate certain CytomX requests in accordance with Section 5.5.3(d) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 5.2.2 hereof, ImmunoGen shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that ImmunoGen reasonably believes that a claim of patent infringement for such patent could be asserted by either CytomX or ImmunoGen; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within the Licensed Patent Rights specified be as set forth in writing by ImmunoGen for inclusion, absent manifest errorSection 5.5.4 hereof.

Preparation of Proposed Patent List. Not later than [***] days from the date of receipt by Novartis Lilly of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis Lilly, with cooperation from ImmunoGen shall prepare and provide ImmunoGen with a list (the “Proposed Patent List”) of (iA) those patents within the Licensed Patent Rights, if any, Rights that Novartis Lilly reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (iiB) those patents within the Licensed Patent Rights, if any, that Novartis Lilly would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen of the Proposed Patent List and Other Required InformationList, ImmunoGen and Novartis Lilly shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis Lilly shall consider in good faith ImmunoGen’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within Not later than [***] days following Novartis’ Lilly’s receipt of the Biosimilar NoticeApplication and related manufacturing information, Novartis Lilly shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that Lilly shall incorporate certain ImmunoGen requests in accordance with Section 7.5(c)(iv) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 7.4(b) hereof, Lilly shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that Lilly reasonably believes that a claim of patent infringement for such patent could be asserted by either ImmunoGen or Lilly; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within the Licensed Patent Rights specified be as set forth in writing by ImmunoGen for inclusion, absent manifest errorSection 7.5(d) hereof.

Preparation of Proposed Patent List. Not later than [***] days from the date of receipt by Novartis CytomX of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis CytomX, with cooperation from ImmunoGen, shall prepare and provide ImmunoGen with a list (the “Proposed Patent List”) of (i) those patents within the Licensed Patent Rights, if any, Rights that Novartis CytomX reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (ii) those patents within the Licensed Patent Rights, if any, that Novartis CytomX would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen of the Proposed Patent List and Other Required InformationList, ImmunoGen and Novartis CytomX shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis CytomX shall consider in good faith ImmunoGen’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within [***] days following Novartis’ receipt Not later than the end of the Biosimilar Noticeperiod specified by Applicable Laws , Novartis CytomX shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that CytomX shall incorporate certain ImmunoGen requests in accordance with Section 5.5.3(d) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 5.2.2 hereof, CytomX shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that CytomX reasonably believes that a claim of patent infringement for such patent could be asserted by either ImmunoGen or CytomX; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within the Licensed Patent Rights specified be as set forth in writing by ImmunoGen for inclusion, absent manifest errorSection 5.5.4 hereof.

Preparation of Proposed Patent List. Not later than [***] twenty (20) days from the date of receipt by Novartis CytomX of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis CytomX, with cooperation from ImmunoGen, shall prepare and provide ImmunoGen with a list (the “Proposed Patent List”) of (i) those patents within the Licensed Patent Rights, if any, Rights that Novartis CytomX reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (ii) those patents within the Licensed Patent Rights, if any, that Novartis CytomX would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen of the Proposed Patent List and Other Required InformationList, ImmunoGen and Novartis CytomX shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis CytomX shall consider in good faith ImmunoGen’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within [***] days following Novartis’ receipt Not later than the end of the Biosimilar Noticeperiod specified by Applicable Laws , Novartis CytomX shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that CytomX shall incorporate certain ImmunoGen requests in accordance with Section 5.5.3(d) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 5.2.2 hereof, CytomX shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that CytomX reasonably believes that a claim of patent infringement for such patent could be asserted by either ImmunoGen or CytomX; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within be as set forth in Section 5.5.4 hereof. [***] Certain information contained herein has been omitted and filed separately with the Licensed Patent Rights specified in writing by ImmunoGen for inclusion, absent manifest errorSecurities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.

Preparation of Proposed Patent List. Not later than [***] days from the date of receipt by Novartis CytomX of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis CytomX, with cooperation from ImmunoGen, shall prepare and provide ImmunoGen with a list (the “Proposed Patent List”) of (i) those patents within the Licensed Patent Rights, if any, Rights that Novartis CytomX reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (ii) those patents within the Licensed Patent Rights, if any, that Novartis CytomX would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen of the Proposed Patent List and Other Required InformationList, ImmunoGen and Novartis CytomX shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis CytomX shall consider in good faith ImmunoGen’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within [***] days following Novartis’ receipt Not later than the end of the Biosimilar Noticeperiod specified by Applicable Laws, Novartis CytomX shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that CytomX shall incorporate certain ImmunoGen requests in accordance with Section 5.5.3(d) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 5.2.2 hereof, CytomX shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that CytomX reasonably believes that a claim of patent infringement for such patent could be asserted by either ImmunoGen or CytomX; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within the Licensed Patent Rights specified be as set forth in writing by ImmunoGen for inclusion, absent manifest errorSection 5.5.4 hereof.

Preparation of Proposed Patent List. Not later than [***] twenty (20) days from the date of receipt by Novartis ImmunoGen of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis ImmunoGen, with cooperation from CytomX, shall prepare and provide ImmunoGen CytomX with a list (the “Proposed Patent List”) of (i) those patents within the Licensed Patent Rights, if any, Rights that Novartis ImmunoGen reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (ii) those patents within the Licensed Patent Rights, if any, that Novartis ImmunoGen would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen CytomX of the Proposed Patent List List, CytomX and Other Required Information, ImmunoGen and Novartis shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis ImmunoGen shall consider in good faith ImmunoGenCytomX’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within [***] days following Novartis’ receipt Not later than the end of the Biosimilar Noticeperiod specified by Applicable Laws, Novartis ImmunoGen shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that ImmunoGen shall incorporate certain CytomX requests in accordance with Section 5.5.3(d) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 5.2.2 hereof, ImmunoGen shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that ImmunoGen reasonably believes that a claim of patent infringement for such patent could be asserted by either CytomX or ImmunoGen; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within the Licensed Patent Rights specified be as set forth in writing by ImmunoGen for inclusion, absent manifest errorSection 5.5.4 hereof.

Preparation of Proposed Patent List. Not later than [***] twenty (20) days from the date of receipt by Novartis CytomX of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis CytomX, with cooperation from ImmunoGen, shall prepare and provide ImmunoGen with a list (the “Proposed Patent List”) of (i) those patents within the Licensed Patent Rights, if any, Rights that Novartis CytomX reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (ii) those patents within the Licensed Patent Rights, if any, that Novartis CytomX would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen of the Proposed Patent List and Other Required InformationList, ImmunoGen and Novartis CytomX shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis CytomX shall consider in good faith ImmunoGen’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within [***] days following Novartis’ receipt Not later than the end of the Biosimilar Noticeperiod specified by Applicable Laws, Novartis CytomX shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that CytomX shall incorporate certain ImmunoGen requests in accordance with Section 5.5.3(d) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 5.2.2 hereof, CytomX shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that CytomX reasonably believes that a claim of patent infringement for such patent could be asserted by either ImmunoGen or CytomX; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within the Licensed Patent Rights specified be as set forth in writing by ImmunoGen for inclusion, absent manifest errorSection 5.5.4 hereof.

Preparation of Proposed Patent List. Not later than [***] days from the date of receipt by Novartis Lilly of the a copy of a Biosimilar NoticeApplication and related manufacturing information, Novartis Lilly, with cooperation from ImmunoGen shall prepare and provide ImmunoGen with a list (the “Proposed Patent List”) of (iA) those patents within the Licensed Patent Rights, if any, Rights that Novartis Lilly reasonably believes would be infringed by the manufacture and/or sale of the Proposed Biosimilar Product and (iiB) those patents within the Licensed Patent Rights, if any, that Novartis Lilly would be willing to sublicense to such Applicant in accordance with the terms of this Agreement, and with such other information pertaining to the Licensed Patent Rights . As soon as would be required to be provided to the Applicant under the BPCIA or other Applicable Law (the “Other Required Information”). Within [***] days practicable following the date of receipt by ImmunoGen of the Proposed Patent List and Other Required InformationList, ImmunoGen and Novartis Lilly shall discuss in good faith the patents within the Licensed Patent Rights to be included on the Proposed Patent List and the Other Required Information and Novartis Lilly shall consider in good faith ImmunoGen’s proposals for changes to the Proposed Patent List and with respect to the Other Required Informationpatents within the Licensed Patent Rights. Within Not later than [***] days following Novartis’ Lilly’s receipt of the Biosimilar NoticeApplication and related manufacturing information, Novartis Lilly shall provide the Applicant with a copy of the Proposed Patent List; provided, however, that Lilly shall incorporate certain ImmunoGen requests in accordance with Section 7.5(c)(iv) hereof. Notwithstanding the enforcement rights with respect to the Licensed Patent Rights set forth in Section 7.4(b) hereof, Lilly shall have the right to include any of the patents within the Licensed Patent Rights on the Proposed Patent List and to the Other Required Informationextent that Lilly reasonably believes that a claim of patent infringement for such patent could be asserted by either ImmunoGen or Lilly; provided, however, that the Proposed Patent List provided right to Applicant control any suit or proceeding in which such a claim is asserted shall include any patent within the Licensed Patent Rights specified be as set forth in writing by ImmunoGen for inclusion, absent manifest errorSection 7.5(d) hereof.