OPPOSITION AND
RE-EXAMINATION OR OTHER SIMILAR PROCEEDING WITH RESPECT THERETO, IN ALL SUCH
COUNTRIES AS IS CUSTOMARY FOR VERTEX TO FILE, PROSECUTE AND MAINTAIN PATENT
RIGHTS COVERING PHARMACEUTICAL PRODUCTS. [***]
IF JANSSEN NOTIFIES VERTEX THAT
IT WISHES VERTEX TO FILE AND PROSECUTE PATENT APPLICATIONS COVERING VERTEX
PATENT RIGHTS IN ANY COUNTRY OR COUNTRIES IN THE TERRITORY IN WHICH IT IS NOT
CUSTOMARY FOR VERTEX TO DO SO, OR TO CONDUCT ANY INTERFERENCE, OPPOSITION AND
RE-EXAMINATION OR OTHER SIMILAR PROCEEDINGS WITH RESPECT TO THE VERTEX PATENT
RIGHTS IN THE TERRITORY, [***] VERTEX SHALL KEEP JANSSEN ADVISED OF THE STATUS
OF ALL ACTUAL AND PROSPECTIVE PATENT FILINGS IN THE TERRITORY AND UPON THE
REQUEST OF JANSSEN, PROVIDE ADVANCE COPIES OF ANY PAPERS RELATED TO THE FILING,
PROSECUTION AND MAINTENANCE OF SUCH PATENT FILINGS. VERTEX SHALL PROMPTLY GIVE
REASONABLE ADVANCE NOTICE TO JANSSEN OF THE GRANT, LAPSE, REVOCATION, SURRENDER,
INVALIDATION OR ABANDONMENT OF ANY VERTEX PATENT RIGHTS IN THE TERRITORY FOR
WHICH VERTEX IS RESPONSIBLE FOR THE FILING, PROSECUTION AND MAINTENANCE. VERTEX
SHALL SOLICIT JANSSEN'S ADVICE AND REVIEW OF THE NATURE AND TEXT OF SUCH PATENT
APPLICATIONS AND IMPORTANT PROSECUTION MATTERS RELATED THERETO IN REASONABLY
SUFFICIENT TIME PRIOR TO FILING THEREOF, AND VERTEX SHALL CONSIDER JANSSEN'S
COMMENTS RELATED THERETO.
10.2
FILING, PROSECUTION AND MAINTENANCE OF JOINT PATENT RIGHTS. IN RESPECT
OF ANY JOINT INFORMATION AND INVENTIONS, THE PARTIES SHALL AGREE, WITHOUT
PREJUDICE TO OWNERSHIP, WHICH PARTY SHALL HAVE THE RIGHT AND/OR OBLIGATION TO
PREPARE AND FILE A PRIORITY PATENT APPLICATION, AND PROSECUTE SUCH
APPLICATION(S) AND MAINTAIN ANY PATENTS DERIVED THEREFROM, WITH THE PARTIES
EQUALLY SHARING THE PATENT COSTS FOR THE PREPARATION, FILING, PROSECUTION AND
MAINTENANCE OF SUCH PRIORITY PATENT APPLICATION. SHOULD THE AGREED-UPON PARTY
ELECT NOT TO PREPARE AND/OR FILE ANY SUCH PATENT APPLICATION, IT SHALL (I)
PROVIDE THE OTHER PARTY WITH WRITTEN NOTICE AS SOON AS REASONABLY POSSIBLE AFTER
MAKING SUCH ELECTION BUT IN ANY EVENT NO LATER THAN [***] BEFORE THE OTHER PARTY
WOULD BE FACED WITH A POSSIBLE LOSS OF RIGHTS, (II)
Information redacted pursuant to a confidential treatment request.
An
unredacted version of this exhibit has been filed separately with the
Commission.
34
GIVE THE OTHER PARTY THE RIGHT, AT THE OTHER PARTY'S DISCRETION AND SOLE
EXPENSE, TO PREPARE AND FILE THE PRIORITY APPLICATION(S), AND (III) OFFER
REASONABLE ASSISTANCE IN CONNECTION WITH SUCH PREPARATION AND FILING [***]
THE
OTHER PARTY, AT ITS DISCRETION AND COST, MAY PROSECUTE SUCH APPLICATION(S) AND
MAINTAIN ANY PATENTS DERIVED THEREFROM.
10.3
OPTION TO PROSECUTE AND MAINTAIN PATENTS.
10.3.1
VERTEX SHALL GIVE NOTICE TO JANSSEN OF ANY DESIRE TO CEASE
PROSECUTION AND/OR MAINTENANCE OF VERTEX PATENT RIGHTS OR JOINT PATENT RIGHTS ON
A COUNTRY-BY-COUNTRY BASIS IN THE TERRITORY AND, IN SUCH CASE, SHALL PERMIT
JANSSEN, AT ITS SOLE DISCRETION, TO CONTINUE PROSECUTION OR MAINTENANCE OF SUCH
VERTEX PATENT RIGHTS [***]. IF JANSSEN ELECTS TO CONTINUE PROSECUTION OR
MAINTENANCE OR TO FILE BASED ON VERTEX'S ELECTION NOT TO FILE PURSUANT TO THIS
SECTION 10.3, VERTEX SHALL EXECUTE SUCH DOCUMENTS AND PERFORM SUCH ACTS AT [***]