IN SUCH PRODUCT SPECIFIC PATENTS IN ANY
COUNTRY, BMS SHALL PROVIDE ISIS WITH AN OPPORTUNITY TO ASSUME RESPONSIBILITY FOR
SUCH FILING, PROSECUTION OR MAINTENANCE OF SUCH PRODUCT SPECIFIC PATENTS AS SET
FORTH IN SECTION 8.2.4.
IN THE CASE WHERE ISIS WISHES TO PURSUE SUBJECT MATTER
BMS HAS DELETED FROM A CLAIM (WHERE BMS HAS ELECTED TO NOT OTHERWISE PURSUE THE
SUBJECT MATTER OF SUCH CLAIM IN THE SAME OR ANOTHER APPLICATION), ISIS MAY
PURSUE SUCH SUBJECT MATTER IN A CORRESPONDING CONTINUATION OR DIVISIONAL
APPLICATION (WHERE PERMISSIBLE UNDER LAW) IN ACCORDANCE WITH AND SUBJECT TO
SECTION 8.2.4.
FOR SO LONG AS BMS RETAINS RESPONSIBILITY UNDER THIS SECTION
8.2.3 WITH RESPECT TO A PARTICULAR PRODUCT SPECIFIC PATENT, BMS SHALL NOT
KNOWINGLY TAKE ANY ACTION OR KNOWINGLY FAIL TO TAKE ANY ACTION DURING THE
FILING, PROSECUTION AND/OR MAINTENANCE OF SUCH PRODUCT SPECIFIC PATENTS THAT
WOULD MATERIALLY ADVERSELY AFFECT SUCH PRODUCT SPECIFIC PATENTS (INCLUDING ANY
MATERIAL REDUCTION IN CLAIM SCOPE), WITHOUT PROVIDING ISIS WRITTEN NOTICE AND
INFORMATION AS SET FORTH ABOVE.
IN THE CASE WHERE BMS ASSUMES RESPONSIBILITY
FOR THE
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PREPARATION, FILING, PROSECUTION OR MAINTENANCE OF ANY PATENT OR PATENT
APPLICATION AS SET FORTH ABOVE, AND HAS USED ALL GOOD FAITH, REASONABLE EFFORTS
TO COMPLY WITH ITS OBLIGATIONS TO PROVIDE NOTICE AND INFORMATION AS SET FORTH IN
THIS SECTION 8.2.3 AND 8.2.4, BMS WILL NOT BE LIABLE TO ISIS IN ANY WAY WITH
RESPECT TO ITS HANDLING OF, OR THE RESULTS OBTAINED FROM, THE FILING,
PROSECUTION, ISSUANCE, EXTENSION OR MAINTENANCE OF SUCH APPLICATION OR ANY
RESULTING PATENT OR ANY FAILURE BY IT TO SO FILE, PROSECUTE, EXTEND OR MAINTAIN.
8.2.4
FILING, PROSECUTION AND MAINTENANCE OF PRODUCT SPECIFIC PATENTS BY
ISIS.
IN NO EVENT WILL BMS, FOR SO LONG AS BMS RETAINS RESPONSIBILITY FOR THE
FILING, PROSECUTION AND MAINTENANCE OF THE PRODUCT SPECIFIC PATENTS AS SET FORTH
IN SECTION 8.2.3, KNOWINGLY PERMIT ANY SUCH PRODUCT SPECIFIC PATENT TO BE
ABANDONED IN ANY COUNTRY, OR ELECT NOT TO FILE A NEW PATENT APPLICATION CLAIMING
PRIORITY TO A PATENT APPLICATION WITHIN SUCH PRODUCT SPECIFIC PATENTS EITHER
BEFORE SUCH PATENT APPLICATION'S ISSUANCE OR WITHIN THE TIME PERIOD REQUIRED FOR
THE FILING OF AN INTERNATIONAL (I.E., PATENT COOPERATION TREATY), REGIONAL
(INCLUDING EUROPEAN PATENT OFFICE) OR NATIONAL APPLICATION, WITHOUT ISIS'S
WRITTEN CONSENT OR ISIS OTHERWISE FIRST BEING GIVEN AN OPPORTUNITY TO ASSUME
FULL RESPONSIBILITY (AT ISIS'S EXPENSE) FOR THE CONTINUED PROSECUTION AND
MAINTENANCE OF SUCH PRODUCT SPECIFIC PATENTS, OR THE FILING OF SUCH NEW PATENT
APPLICATION.
ACCORDINGLY, BMS, OR ITS OUTSIDE COUNSEL, SHALL PROVIDE ISIS WITH
NOTICE OF THE ALLOWANCE AND EXPECTED ISSUANCE DATE OF ANY PATENT WITHIN THE
PRODUCT SPECIFIC PATENTS, OR ANY OF THE AFOREMENTIONED FILING DEADLINES, AND
ISIS SHALL PROVIDE BMS WITH PROMPT NOTICE AS TO WHETHER ISIS DESIRES BMS TO FILE
ANY SUCH NEW PATENT APPLICATION.
IN THE EVENT THAT BMS DECIDES EITHER (I) NOT
TO CONTINUE THE PROSECUTION OR MAINTENANCE OF A PATENT APPLICATION OR PATENT
WITHIN PRODUCT SPECIFIC PATENTS IN ANY COUNTRY OR (II) NOT TO FILE SUCH NEW
PATENT APPLICATION REQUESTED