NEITHER PARTY SHALL
HAVE ANY OBLIGATION TO ACCOUNT TO THE OTHER FOR PROFITS WITH RESPECT TO, OR TO
OBTAIN ANY CONSENT OF THE OTHER PARTY TO LICENSE OR EXPLOIT, JOINTLY-OWNED
COLLABORATION TECHNOLOGY, BY REASON OF JOINT OWNERSHIP THEREOF, AND EACH PARTY
HEREBY WAIVES ANY RIGHT IT MAY HAVE UNDER THE LAWS OF ANY JURISDICTION TO
REQUIRE ANY SUCH CONSENT OR ACCOUNTING.
EACH PARTY SHALL PROMPTLY DISCLOSE TO
THE OTHER PARTY IN WRITING, AND SHALL CAUSE ITS AFFILIATES TO SO DISCLOSE, THE
DISCOVERY, DEVELOPMENT, INVENTION OR CREATION OF ANY JOINTLY-OWNED COLLABORATION
TECHNOLOGY.
8.1.3
DETERMINING INVENTORSHIP.
THE DETERMINATION OF INVENTORSHIP SHALL
BE MADE IN ACCORDANCE WITH UNITED STATES PATENT LAWS.
THE JOINT PATENT
SUBCOMMITTEE SHALL DISCUSS ALL MATTERS PERTAINING TO THE DETERMINATION OF
INVENTORSHIP AND, IN CASE OF A DISPUTE IN THE JOINT PATENT SUBCOMMITTEE (OR
OTHERWISE BETWEEN REGULUS AND GSK) OVER INVENTORSHIP AND, AS A RESULT, WHETHER
(I) ANY PARTICULAR COLLABORATION TECHNOLOGY IS SOLELY OWNED BY ONE PARTY OR THE
OTHER OR JOINTLY OWNED BY BOTH PARTIES OR (II) WHETHER ANY PARTICULAR KNOW-HOW
IS REGULUS KNOW-HOW, GSK KNOW-HOW OR COLLABORATION KNOW-HOW, SUCH DISPUTE SHALL
BE RESOLVED BY INDEPENDENT PATENT COUNSEL NOT REGULARLY EMPLOYED IN THE PAST TWO
(2) YEARS BY EITHER PARTY AND REASONABLY ACCEPTABLE TO BOTH PARTIES TO RESOLVE
SUCH DISPUTE.
THE DECISION OF SUCH INDEPENDENT PATENT COUNSEL SHALL BE BINDING
ON THE PARTIES WITH RESPECT TO THE ISSUE OF INVENTORSHIP.
EXPENSES OF SUCH
PATENT COUNSEL SHALL BE SHARED EQUALLY BY THE PARTIES.
8.2
PROSECUTION AND MAINTENANCE OF PATENTS.
8.2.1
PATENT FILINGS.
THE PARTY RESPONSIBLE FOR PROSECUTION AND
MAINTENANCE OF ANY COLLABORATION PATENTS AS SET FORTH IN SECTIONS 8.2.2 AND
8.2.3 SHALL USE DILIGENT EFFORTS TO OBTAIN PATENT PROTECTION FOR COLLABORATION
COMPOUNDS AND LICENSED PRODUCTS, IF AND AS APPLICABLE, USING COUNSEL OF ITS OWN
CHOICE BUT REASONABLY ACCEPTABLE TO THE OTHER PARTY (PROVIDED, THAT GSK
ACKNOWLEDGES AND AGREES THAT IT HAS BEEN ADVISED OF REGULUS' PATENT COUNSEL AS
OF THE EFFECTIVE DATE AND THAT SUCH PATENT COUNSEL IS REASONABLY ACCEPTABLE TO
GSK), IN THE MAJOR COUNTRIES AND SUCH OTHER COUNTRIES AS THE RESPONSIBLE PARTY
SHALL SEE FIT.
IF SUBSEQUENT TO THE EFFECTIVE DATE, GSK DETERMINES THAT SUCH
PATENT COUNSEL IS NOT SATISFACTORY, GSK WILL RAISE SUCH CONCERNS WITH THE JOINT
PATENT SUBCOMMITTEE AND GSK MAY REQUEST THAT SUCH PATENT COUNSEL BE CHANGED,
SUCH REQUEST SHALL NOT BE UNREASONABLY REFUSED BY REGULUS.
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8.2.2
REGULUS PATENTS AND GSK PATENTS.
(A)
REGULUS SHALL CONTROL AND BE RESPONSIBLE FOR ALL ASPECTS OF THE
PROSECUTION AND MAINTENANCE OF ALL REGULUS PATENTS AND ALL REGULUS COLLABORATION
PATENTS, SUBJECT TO SECTION 8.2.4.
(B)
GSK SHALL CONTROL AND BE RESPONSIBLE FOR ALL ASPECTS OF THE
PROSECUTION AND MAINTENANCE OF ALL GSK PATENTS AND ALL GSK COLLABORATION
PATENTS, SUBJECT TO SECTION 8.2.4.
8.2.3
JOINTLY-OWNED COLLABORATION PATENTS.
THE STRATEGY FOR PROSECUTION
AND MAINTENANCE OF ALL JOINTLY-OWNED COLLABORATION PATENTS SHALL BE DISCUSSED BY
GSK AND REGULUS THROUGH THE JOINT PATENT SUBCOMMITTEE.
SUBJECT TO
SECTION 8.2.4, GSK SHALL HAVE THE FIRST RIGHT TO CONTROL AND BE RESPONSIBLE FOR
THE PROSECUTION