DISCUSSED BY THE
PARTIES. IF REQUESTED IN WRITING BY THE NON-PUBLISHING PARTY, THE PUBLISHING
PARTY WILL WITHHOLD MATERIAL FROM SUBMISSION FOR PUBLICATION OR PRESENTATION FOR
A REASONABLE TIME TO ALLOW FOR THE FILING OF A PATENT APPLICATION.
ARTICLE 8 -
CONFIDENTIALITY
SECTION 8.1
DISCLOSURE AND USE RESTRICTION.
EXCEPT PURSUANT TO AN
AUTHORIZED DISCLOSURE, THE PARTIES AGREE THAT, FOR THE TERM AND FOR FIVE YEARS
THEREAFTER, EACH PARTY WILL KEEP COMPLETELY CONFIDENTIAL AND WILL NOT PUBLISH,
SUBMIT FOR PUBLICATION OR OTHERWISE DISCLOSE, AND WILL NOT USE FOR ANY PURPOSE
EXCEPT FOR THE PURPOSES CONTEMPLATED BY THIS AGREEMENT, ANY CONFIDENTIAL
INFORMATION RECEIVED FROM THE OTHER PARTY.
ARTICLE 9 -
INTELLECTUAL PROPERTY
SECTION 9.1
PROSECUTION OF PATENTS.
9.1.1
SOLELY OWNED PATENTS. WITH THE EXCEPTION OF THE ALICAFORSEN PATENTS
AND THE ICAM-1 SPECIFIC PATENTS, WHICH ARE ADDRESSED IN SECTION 9.1.2, EACH
PARTY WILL HAVE THE SOLE RIGHT, AT ITS COST AND EXPENSE AND AT ITS SOLE
DISCRETION, TO OBTAIN, PROSECUTE, MAINTAIN AND ENFORCE THROUGHOUT THE WORLD ANY
PATENTS SOLELY OWNED OR CONTROLLED BY SUCH PARTY.
9.1.2
ALICAFORSEN PATENTS AND ICAM-1 SPECIFIC PATENTS.
SUBJECT TO
SECTION 9.1.4 BELOW, ISIS WILL HAVE THE SOLE OBLIGATION AT ITS EXPENSE, TO
OBTAIN, PROSECUTE AND MAINTAIN THE ALICAFORSEN PATENTS AND THE ICAM-1 SPECIFIC
PATENTS IN SUCH COUNTRIES AS ISIS IS PROSECUTING SUCH PATENTS ON THE RESTATEMENT
DATE USING COMMERCIALLY REASONABLE EFFORTS.
FOR CLARITY, ATLANTIC WILL NOT HAVE
THE RIGHT TO REVIEW OR COMMENT ON ANY APPLICATIONS OR REGISTRATIONS TO BE FILED
BY ISIS UNDER THIS SECTION 9.1.2, AND ISIS MAY CEASE PROSECUTING OR MAINTAINING
PARTICULAR APPLICATIONS OR PATENTS IN THE ALICAFORSEN PATENTS AND ICAM-1
SPECIFIC PATENTS IN SELECTED JURISDICTIONS, IF ISIS DETERMINES THAT IT IS NOT
COMMERCIALLY REASONABLE TO CONTINUE SUCH EFFORTS (IN WHICH CASE THE TERMS OF
SECTION 9.1.4 WILL APPLY).
9.1.3
[NOT USED]
9.1.4
DISCONTINUED PATENTS.
IF UNDER SECTION 9.1.2 ISIS ELECTS TO
DISCONTINUE PROSECUTION OR MAINTENANCE OF ANY PARTICULAR APPLICATIONS OR PATENTS
IN THE ALICAFORSEN PATENTS OR THE ICAM-1 SPECIFIC PATENTS (IF APPLICABLE), AS
THE CASE MAY BE, IN A SELECTED JURISDICTION, ISIS WILL GIVE THIRTY (30) DAYS
ADVANCE WRITTEN NOTICE TO ATLANTIC OF ANY DECISION TO CEASE PREPARATION, FILING,
PROSECUTION AND MAINTENANCE OF THAT PATENT RIGHT (A "DISCONTINUED PATENT").
IN
SUCH CASE, ATLANTIC MAY ELECT AT ITS SOLE DISCRETION TO CONTINUE PREPARATION,
FILING, PROSECUTION OR MAINTENANCE OF THE DISCONTINUED PATENT IN THE SELECT
JURISDICTION AT ITS SOLE EXPENSE AND THEREAFTER ATLANTIC WILL OWN ANY SUCH
PATENT APPLICATION AND PATENTS MATURING THEREFROM AND BE
14
SOLELY RESPONSIBLE FOR ALL COSTS. ISIS WILL EXECUTE SUCH DOCUMENTS AND PERFORM
SUCH ACTS AS MAY BE REASONABLY NECESSARY FOR ATLANTIC TO CONTINUE PROSECUTION OR
MAINTENANCE OF THE APPLICABLE DISCONTINUED PATENT INCLUDING ASSIGNING OWNERSHIP
OF SUCH PATENT OR APPLICATION. SHOULD ATLANTIC ELECT TO CONTINUE PREPARATION,
FILING, PROSECUTION AND MAINTENANCE OF DISCONTINUED PATENTS WHICH ARE
ALICAFORSEN PATENTS OR ICAM-1 SPECIFIC PATENTS, SUCH PATENTS WILL NO LONGER BE
DEEMED TO BE ALICAFORSEN PATENTS OR ICAM-1 SPECIFIC PATENTS FOR THE PURPOSES OF
THIS AGREEMENT.
NOTWITHSTANDING THE FOREGOING, ATLANTIC'S RIGHT TO CONTINUE THE
PREPARATION,