CONFIDENTIAL TREATMENT REQUESTED UNDER RULE 24B-2
UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.
[*****] INDICATES OMITTED MATERIAL THAT IS THE SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST FILED SEPARATELY WITH THE COMMISSION. THE OMITTED MATERIAL HAS BEEN FILED SEPARATELY WITH THE COMMISSION.
Prosecution and Maintenance of ACI Patents and Joint Patents. Subject to the provisions
of Sections 5.2.3, 05.2.6, and this Section 8.2.1, Lilly, after consultation with ACI, shall, at Lilly’s
option, select outside counsel or internal counsel (“Patent Counsel”) to be responsible for the preparation,
filing, prosecution and maintenance of the ACI Patents and Joint Patents worldwide and to be responsible for any related interference,
re-issuance, re-examination, opposition and other similar proceedings, applications for extensions pursuant to 35 U.S.C. §156
et. seq. and in other jurisdictions pursuant to supplementary protection certificates, and applications for any other extension
in all jurisdictions that are now or become available in the future, wherever applicable (collectively, “Prosecution”).
In accordance with Sections 5.2.3 and 05.2.6, Lilly shall have final decision-making authority with respect to
all Prosecution-related matters; provided, that with respect to the ACI Patents and Joint Patents, the Parties shall cooperate
and assist each other through the Patent Subcommittee in the Prosecution of such Patents in accordance with the following:
soon as either Party determines that it wishes to file a Patent application covering any invention within the ACI Patents or Joint
Patents, it shall promptly inform the Patent Subcommittee thereof. With respect thereto, Lilly shall, in consultation with ACI,
either (1) draft a patent application for such invention or (2) promptly engage outside Patent Counsel to draft a patent application
for such invention and provide a copy of such patent application to ACI.
shall keep the Patent Subcommittee informed as to the filing and Prosecution of the ACI Patents and the Joint Patents.
Lilly elects to use outside Patent Counsel, the outside Patent Counsel shall be instructed to keep the Patent Subcommittee informed
as to the filing and Prosecution of the ACI Patents and the Joint Patents.
respect to Patents within the ACI Patents and Joint Patents, if Lilly elects not to participate in the Prosecution of any such
Patents (whether worldwide or with respect to any particular country), including electing not to file a Patent application with
respect thereto or electing to allow any such Patents to lapse or become abandoned or unenforceable, then Lilly shall promptly
notify ACI in writing and thereafter, ACI may, but is not required to, undertake, at ACI’s sole expense and in its sole
discretion, the Prosecution of such Patents; [*****].
otherwise mutually agreed by the Parties in writing and except to the extent Lilly elects not to Prosecute any ACI Patents or
Joint Patents pursuant to Section 8.2.1(iv), Lilly shall bear [*****].
Prosecution and Maintenance of Lilly Patents. As between the Parties, Lilly shall have
the sole right, but not the obligation, to prepare, file, prosecute and maintain the Lilly Patents worldwide, and to be responsible
for any related interference, re-issuance, re-examination and opposition proceedings, in each case, at its sole cost and expense.
All costs of Prosecuting the Lilly Patents shall be Lilly’s sole responsibility.