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 SUCH PARTY WILL OWN ANY SUCH PATENT APPLICATION AND PATENTS MATURING
THEREFROM AND BE SOLELY RESPONSIBLE FOR ALL COSTS.
IN THE EVENT OF A
DISCONTINUED PATENT CAUSED BY ATLANTIC, ATLANTIC'S EXCLUSIVE LICENSES UNDER
ARTICLE 2 AND ARTICLE 4 (IF APPLICABLE) WITH RESPECT TO SUCH DISCONTINUED PATENT
IN SUCH JURISDICTION WILL AUTOMATICALLY CONVERT INTO NONEXCLUSIVE LICENSES WITH
THE FINANCIAL TERMS SET FORTH IN ARTICLE 6 REMAINING INTACT, AND ISIS'
OBLIGATIONS UNDER SECTION 4.2 WILL TERMINATE IN SUCH SELECT JURISDICTION SOLELY
WITH RESPECT TO SUCH DISCONTINUED PATENT. THE PARTY ELECTING TO CAUSE A
DISCONTINUED PATENT WILL EXECUTE SUCH DOCUMENTS AND PERFORM SUCH ACTS AS MAY BE
REASONABLY NECESSARY FOR THE OTHER PARTY 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, FILING, PROSECUTION AND MAINTENANCE OF A DISCONTINUED PATENT THAT
IS AN ICAM-SPECIFIC PATENT IS LIMITED SOLELY TO THE EXTENT SUCH PATENT CLAIMS
ICAM-1.
9.1.5
COOPERATION.
EACH PARTY WILL COOPERATE REASONABLY IN THE
PREPARATION, FILING, PROSECUTION, AND MAINTENANCE OF THE ALICAFORSEN PATENTS,
THE ICAM-1 SPECIFIC PATENTS (IF APPLICABLE), THE SECOND GENERATION ICAM-1
PRODUCT-SPECIFIC PATENTS, AND THE OTHER PARTY'S PATENTS WHICH COVER A PRODUCT.
SUCH COOPERATION INCLUDES (A) PROMPTLY EXECUTING ALL PAPERS AND INSTRUMENTS AND
REQUIRING EMPLOYEES TO EXECUTE SUCH PAPERS AND INSTRUMENTS AS REASONABLE AND
15
APPROPRIATE SO AS TO ENABLE SUCH OTHER PARTY, TO FILE, PROSECUTE, AND MAINTAIN
ITS PATENTS IN ANY COUNTRY; AND (B) PROMPTLY INFORMING SUCH OTHER PARTY OF
MATTERS THAT MAY AFFECT THE PREPARATION, FILING, PROSECUTION, OR MAINTENANCE OF
ANY SUCH PATENTS.
9.1.6
PATENT TERM EXTENSIONS.
THE PARTIES AGREE TO COOPERATE IN AN EFFORT
TO AVOID LOSS OF ANY OF THE PATENTS FORMING PART OF ALICAFORSEN PATENTS, ICAM-1
SPECIFIC PATENTS OR SECOND GENERATION ICAM-1 PRODUCT-SPECIFIC PATENTS INCLUDING
BY EXECUTING ANY DOCUMENTS AS MAY BE REASONABLY REQUIRED.
IN PARTICULAR, THE
PARTIES SHALL COOPERATE WITH EACH OTHER IN OBTAINING PATENT TERM EXTENSION OR
RESTORATION OR SUPPLEMENTAL PROTECTION CERTIFICATE ("PATENT TERM EXTENSIONS") OR
THEIR EQUIVALENTS IN ANY COUNTRY AND REGION WHERE APPLICABLE.
IN PARTICULAR BUT
WITHOUT LIMITING THE FOREGOING ISIS SHALL PROVIDE REASONABLE ASSISTANCE TO
ATLANTIC, INCLUDING BY EXECUTING ANY REQUIRED DOCUMENTS AND PROVIDING ANY
RELEVANT PATENT INFORMATION TO ATLANTIC, SO THAT ATLANTIC, AS REGULATORY
APPROVAL APPLICANT, MAY DEAL WITH THE APPLICABLE REGULATORY AUTHORITY IN
CONNECTION WITH OBTAINING SUCH PATENT TERM EXTENSION.
SECTION 9.2
ENFORCEMENT OF PATENTS
9.2.1
RIGHTS AND PROCEDURES.
IF ISIS OR ATLANTIC DETERMINES THAT ANY
PATENT LICENSED HEREUNDER IS BEING INFRINGED BY A THIRD PARTY'S ACTIVITIES AND
THAT SUCH INFRINGEMENT COULD AFFECT THE EXERCISE BY THE PARTIES OF THEIR
RESPECTIVE