Common use of Step-In Right Clause in Contracts

Step-In Right. (i) If, within [***] days (or such shorter period of time as required by applicable Law to avoid loss of material enforcement rights) after Genzyme’s receipt of a notice of a Competitive Infringement with respect to any Alnylam Product-Specific Patent or Joint Collaboration IP, Genzyme does not initiate any Infringement Action permitted hereunder against such Competitive Infringement in the Licensed Territory, Alnylam may elect, in its sole discretion, to bring and control an Infringement Action in connection therewith at its sole cost and expense by providing written notice of such election to Genzyme. CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. (ii) If (A) there are no Alnylam Product-Specific Patents or Patent Rights included in Joint Collaboration IP that can be asserted against a Competitive Infringement in the Licensed Territory, for any reason other than the unwillingness of Genzyme to consent to such assertion of any Patent Rights included in the Joint Collaboration IP; (B) there are Alnylam Core Technology Patent(s) that can reasonably be asserted, but Alnylam refuses to either permit Genzyme to assert or itself assert at least one of such Alnylam Core Technology Patent(s) that can reasonably be asserted against a Competitive Infringement in the Licensed Territory; and (C) Genzyme and Alnylam are unable to stop the Competitive Infringement through enforcement of any other Patent Rights or Know-How Controlled by either Party, then the royalties to be paid by Genzyme to Alnylam pursuant to Section 8.2 (Royalties), with respect to the applicable Global AT3 Licensed Product in the countries in the Licensed Territory where such Competitive Infringement exists, shall be reduced by [***] during the period when the conditions in the foregoing clauses (A), (B) and (C) exist and such Competitive Infringement continues, subject to the limitations set forth in Section 8.2 (Royalties).

Step-In Right. If the Party having the first right in Section 9.2(a) or Section 9.2(b) elects not to prepare, file, prosecute, continue to prosecute or maintain a given Patent Right within the Licensed Patents, Patent Rights in Sole Inventions or Joint Patents (i) If“Abandoning Party”), then the Abandoning Party will give the other Party notice thereof within a reasonable period (but not less than [***] days (prior to allowing such Patent Rights to lapse or become abandoned or unenforceable, and the other Party will have the right to prepare, file, prosecute, maintain or defend such shorter period Patent Right. The other Party will have the right, but not the obligation, to assume responsibility for the preparation, filing, prosecution, or continuation of time the prosecution of such Patent Rights in such region and paying any required fees to maintain such Patent Rights in such region or defending such Patent Rights, all at such other Party’s sole expense, through patent counsel or agents of its choice. A Party will not become an assignee of any such Patent Rights as required by applicable Law a result of its assumption of any such responsibility, except as expressly provided herein. Upon transfer of the Abandoning Party’s responsibility for preparing, filing, prosecuting, maintaining or defending any of the Patent Rights to avoid loss the other Party under this Section 9.2(c), the Abandoning Party will promptly deliver to the other Party copies of material enforcement rights) after Genzyme’s receipt of a notice of a Competitive Infringement all necessary files related to the Patent Rights with respect to any Alnylam Product-Specific Patent or Joint Collaboration IPwhich responsibility has been transferred and will take all actions and execute all documents reasonably necessary for the other Party to assume such prosecution, Genzyme does not initiate any Infringement Action permitted hereunder against such Competitive Infringement in maintenance and defense. In the Licensed Territoryevent ▇▇▇▇▇▇▇ assumes the preparation, Alnylam may electfiling, in its sole discretionprosecution, to bring maintenance, and control an Infringement Action in connection therewith at its sole cost and expense by providing written notice of such election to Genzyme. CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. (ii) If (A) there are no Alnylam Product-Specific Patents or Patent Rights included in Joint Collaboration IP that can be asserted against a Competitive Infringement in the Licensed Territory, for any reason other than the unwillingness of Genzyme to consent to such assertion defense of any Licensed Patent, such Patent Rights included in Right will no longer be considered a Licensed Patent for purposes of determining the Joint Collaboration IP; (B) there are Alnylam Core Technology Patent(s) that can reasonably be asserted, but Alnylam refuses to either permit Genzyme to assert or itself assert at least one of such Alnylam Core Technology Patent(s) that can reasonably be asserted against a Competitive Infringement in the Licensed Territory; and (C) Genzyme and Alnylam are unable to stop the Competitive Infringement through enforcement of any other Patent Rights or Know-How Controlled by either Party, then the royalties to be paid by Genzyme to Alnylam Royalty Term pursuant to Section 8.2 8.4(b). In the event Sutro assumes the preparation, filing, prosecution, maintenance, and defense of any patent application or patent in respect of a BioNova Sole Invention (Royaltieswhich for clarity BioNova has itself elected to protect and had then filed a patent application to seek to protect), with respect at Sutro’s option, ▇▇▇▇▇▇▇ agrees to the applicable Global AT3 Licensed Product assign, and does hereby assign, to Sutro its entire right, title and interest in the countries in the Licensed Territory where and to such Competitive Infringement existsPatent Right and thereafter, BioNova shall be reduced by [***] during the period when the conditions in the foregoing clauses (A)have a royalty-free, (B) non-exclusive, non-transferrable and (C) exist and non-sublicensable license under such Competitive Infringement continues, subject to the limitations set forth in Section 8.2 (Royalties)Patent Right for its internal research purposes.

Step-In Right. Subject to the provisions of any Third Party license agreement under which Dyax’s rights in Dyax Patent Rights are granted or Fovea’s rights in Fovea Patent Rights are granted, if the Party with the first right to enforce (ithe “Initial Enforcement Rights Party”) Ifthe Dyax Intellectual Property, the Fovea Intellectual Property or the Joint Intellectual Property fails to initiate a * Confidential Treatment Requested. Omitted portions filed with the Commission. suit or take other appropriate action that it has the initial right to initiate or take pursuant to Section 8.4(b) above with respect to a Competitive Infringement in the other Party’s Territory within [*****] days after becoming aware of the basis for such suit or action, then the other Party (or such shorter period of time as required by applicable Law to avoid loss of material enforcement rightsthe “Secondary Enforcement Rights Party”) after Genzyme’s receipt of a may, in its discretion, provide the Initial Enforcement Rights Party with written notice of such Secondary Enforcement Rights Party’s intent to initiate a Competitive Infringement suit or take other appropriate action with respect to any Alnylam Product-Specific Patent or Joint Collaboration IP, Genzyme does not initiate any Infringement Action permitted hereunder against such Competitive Infringement in the Licensed Secondary Enforcement Rights Party’s Territory, Alnylam may elect, in its sole discretion, . If the Secondary Enforcement Rights Party provides such notice and the Initial Enforcement Rights Party fails to bring and control an Infringement Action in connection therewith at its sole cost and expense by providing written notice initiate a suit or take such other appropriate action within thirty (30) days after receipt of such election notice from the Secondary Enforcement Rights Party, then the Secondary Enforcement Rights Party shall have the right to Genzyme. CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. (ii) If (A) there are no Alnylam Product-Specific Patents initiate a suit or Patent Rights included in take other appropriate action that it believes is reasonably required to protect the applicable Dyax Intellectual Property, the applicable Fovea Intellectual Property or the Joint Collaboration IP that can be asserted against a Intellectual Property from such Competitive Infringement in the Licensed Secondary Enforcement Rights Party’s Territory. Notwithstanding anything to the contrary contained in this Section 8.4(c) or elsewhere, for any reason if Dyax fails to initiate a suit or take other than appropriate action that it has the unwillingness of Genzyme initial right to consent to such assertion of any Patent Rights included in the Joint Collaboration IP; (B) there are Alnylam Core Technology Patent(s) that can reasonably be asserted, but Alnylam refuses to either permit Genzyme to assert initiate or itself assert at least one of such Alnylam Core Technology Patent(s) that can reasonably be asserted against a Competitive Infringement in the Licensed Territory; and (C) Genzyme and Alnylam are unable to stop the Competitive Infringement through enforcement of any other Patent Rights or Know-How Controlled by either Party, then the royalties to be paid by Genzyme to Alnylam take pursuant to Section 8.2 (Royalties)8.4(b) above with respect to any Competitive Infringement involving the Core Dyax Patent Rights, then, with respect to the applicable Global AT3 Licensed Product in the countries in the Licensed Territory where such Core Dyax Patent Rights, (i) Fovea shall have no rights to initiate a suit or take other action with respect to such Competitive Infringement exists, shall be reduced by [***] during the period when the conditions in the foregoing clauses (A), (B) any country and (Cii) exist each country of the Fovea Territory in which such Core Dyax Patent Rights have been filed or issued and in which such Competitive Infringement continuesexists shall be treated, subject to the limitations set forth for purposes of Section 7.1(d)(ii), as if there is Generic Competition in Section 8.2 (Royalties)such country.

Step-In Right. If the Party with the right to initiate suit pursuant to subsection (ib) Iffails to initiate a suit or take such other appropriate action within sixty (60) days after becoming aware of the alleged infringements or unauthorized use, within [***] days (then, to the extent that such alleged infringement or such shorter period of time as required by applicable Law unauthorized use pertains to avoid loss of material enforcement rights) after Genzyme’s receipt of a notice of a Competitive Infringement with respect to any Alnylam ProductRoyalty-Specific Patent or Joint Collaboration IPBearing Products, Genzyme does not initiate any Infringement Action permitted hereunder against such Competitive Infringement in the Licensed Territory, Alnylam may electother Party may, in its sole discretion, to bring and control an Infringement Action in connection therewith at its sole cost and expense by providing provide the Party with the initial right with written notice of its intent to initiate a suit or take other appropriate action, such election notice to Genzyme. CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. be provided within thirty (ii30) If (A) there are no Alnylam Product-Specific Patents or Patent Rights included in Joint Collaboration IP that can be asserted against a Competitive Infringement in days after the Licensed Territory, for any reason other than the unwillingness of Genzyme to consent to such assertion of any Patent Rights included in the Joint Collaboration IP; (B) there are Alnylam Core Technology Patent(s) that can reasonably be asserted, but Alnylam refuses to either permit Genzyme to assert or itself assert at least one expiration of such Alnylam Core Technology Patent(ssixty (60) that can reasonably be asserted against day period. If such other Party provides such notice and the Party with the initial right fails to initiate a Competitive Infringement in the Licensed Territory; and suit or take such other appropriate action within thirty (C30) Genzyme and Alnylam are unable to stop the Competitive Infringement through enforcement days after receipt of any such notice from such other Patent Rights or Know-How Controlled by either Party, then such other Party shall have the royalties right to be paid by Genzyme initiate a suit or take other appropriate action that it believes is reasonably required to Alnylam pursuant protect the BSC Intellectual Property, the NitroMed Intellectual Property and Joint Intellectual Property, as applicable. Such other Party shall give the Party with the initial right sufficient advance notice of its intent to Section 8.2 file any such suit or take any such action and the reasons therefor, and shall provide the Party with the initial right with an opportunity to make suggestions and comments regarding such suit or action. Thereafter, such other Party shall keep the Party with the initial right promptly informed, and shall from time to time consult with the Party with the initial right regarding the status of any such suit or action and shall provide the Party with the initial right with copies of all material documents (Royalties)i.e., with respect complaints, answers, counterclaims, material motions, orders of the court, memoranda of law and legal briefs, interrogatory responses, depositions, material pre-trial filings, expert reports, affidavits filed in court, transcripts of hearings and trial testimony, trial exhibits and notices of appeal) filed in, or otherwise relating to, such suit or action. In addition, the provisions of subsection (c) above shall apply to the applicable Global AT3 Licensed Product in the countries in the Licensed Territory where such Competitive Infringement exists, shall be reduced by [***] during the period when the conditions in the foregoing clauses suits initiated under this subsection (A), (B) and (C) exist and such Competitive Infringement continues, subject to the limitations set forth in Section 8.2 (Royaltiesd).