Common use of Failure to Reimburse Clause in Contracts

Failure to Reimburse. Licensee may elect not to reimburse WU for amounts due under Section 9.2 in respect to one or more Patent Rights patent and/or applications only by giving WU notice of such election at least thirty (30) days before the date on which the applicable cost or expense is to be incurred by WU (each an “Election Notice”). For purposes of this Section 9.3, a cost or expense shall be deemed to be incurred by WU on the earlier of (a) the date WU actually pays the cost or expense, or (b) the date WU becomes obligated to pay the cost or expense (which, for example, shall be the date WU engages a third party to perform any service which gives rise to any such cost or expense). Any such Election Notice shall specify the Patent Rights patents and/or applications to which such Election Notice relates (“Elected Patent Rights”). In the event any Election Notice is given by Licensee, (a) the term “Patent Rights” shall be modified to exclude, as applicable, such Elected Patent Rights, (b) the term “Technical Information” shall be modified to exclude any research and development information, unpatented inventions, know-how, data, methods, and technical data and information no longer necessary for the exploitation of the license granted to the remaining Patent Rights, and (c) the term “Tangible Research Property” shall be modified to exclude any and all research tools and other personal property that WU may have provided to Licensee that is no longer necessary for the exploitation of the license granted to the remaining Patent Rights, in each instance as of the date the Election Notice is given. Accordingly, and for the avoidance of doubt, as of the date the Election Notice is given, the license to the Elected Patent Rights, the applicable Technical Information and the applicable Tangible Research Property granted to Licensee under Sections 2.1, 2.2 and 2.3 above shall terminate, and WU shall be free, without any further obligation to Licensee whatsoever, to abandon the applications or patents subject to the Election Notice, or to continue prosecution or maintenance, for WU’s sole use and benefit, including a license to unrelated third parties, at WU’s option. Licensee agrees to deliver to WU, along with any Election Notice, all Technical Information and Tangible Research Property to which such Election Notice relates. For the avoidance of doubt, WU will not refund any amounts paid under Section 9.2 to WU prior to WU’s receipt of an Election Notice.

Failure to Reimburse. Licensee may elect If a Party elects not to reimburse WU the other Party for amounts due under Section 9.2 in respect to one [***] percent ([***]%) of the costs and expenses of preparation, filing, prosecution and maintenance of a Patent application or more Patent within the Combined Therapy Patent Rights patent and/or applications only by giving WU notice of in a given country, the non-reimbursed Party shall have the right, but not an obligation, to prepare, file, prosecute or maintain such election Patent application or Patent in such country in its own name and at least thirty (30) days before the date on which the applicable cost or expense is to be incurred by WU (each an “Election Notice”). For purposes of this Section 9.3, a cost or expense shall be deemed to be incurred by WU on the earlier of (a) the date WU actually pays the cost or its own expense, with the prior written consent of the other Party (which shall not be unreasonably withheld) and the other Party shall promptly assign, without additional consideration, all of its rights, title and interest to the Patent application or (b) Patent in said country and any inventions covered by such Patent application or Patent to the date WU becomes obligated non-reimbursed Party if the non-reimbursed Party wishes to pay the cost prepare, file, prosecute or expense (whichmaintain said Patent application or Patent. After giving effect to such assignment, for example, such assigned invention and any corresponding Combined Therapy Patent Rights thereto shall be the date WU engages treated as a third party to perform any service which gives rise to any such cost or expense). Any such Election Notice shall specify the BioXcel Independent Patent Rights patents and/or applications to which such Election Notice relates (“Elected or Nektar Independent Patent Rights”). In the event any Election Notice is given by Licensee, (a) the term “Patent Rights” shall be modified to exclude, as applicable. The Party who does not wish to prepare, such Elected file, prosecute or maintain a Patent Rights, (b) application or Patent within the term “Technical Information” Combined Therapy Patent in any country shall be modified assist in the timely provision of all documents required under national provisions to exclude any research and development information, unpatented inventions, know-how, data, methods, and technical data and information no longer necessary for register said assignment of rights with the exploitation corresponding national authorities at the sole expense of the license granted Party who wished to prepare, file, prosecute or maintain such Patent application or Patent in that given country. Nektar shall have the remaining Patent Rightsright to disclose to BMS, and (c) the term “Tangible Research Property” shall be modified to exclude any and all research tools and other personal property that WU may have provided to Licensee that is no longer necessary for the exploitation of the license granted to the remaining Patent Rights, in each instance as of the date the Election Notice is given. Accordingly, and for the avoidance of doubt, as of the date the Election Notice is given, the license to the Elected Patent Rights, the applicable Technical Information and the applicable Tangible Research Property granted to Licensee under Sections 2.1, 2.2 and 2.3 above shall terminate, and WU shall be free, without any further obligation to Licensee whatsoever, to abandon the applications or patents subject to the Election Noticeconfidentiality provisions of the SCA governing disclosures of Nektar confidential information to BMS, or applications for Patents, amendments thereto, assignment-related documents and other related correspondence to continue prosecution or maintenanceand from Patent offices contemplated by this subsection (ii) to the extent necessary to comply with Nektar’s obligations under the SCA, provided that Nektar shall not disclose any confidential information of the CPI Compound supplier in connection therewith (to CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WHERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. be clear, nothing in the foregoing proviso shall prohibit Nektar from disclosing the Combined Therapy Study Data to BMS on the terms provided herein); and provided further, that Nektar remains liable to BioXcel for WU’s sole use and benefit, including a license to unrelated third parties, at WU’s option. Licensee agrees to deliver to WU, along with any Election Notice, all Technical Information and Tangible Research Property to which breach by BMS of such Election Notice relates. For the avoidance of doubt, WU will not refund any amounts paid under Section 9.2 to WU prior to WU’s receipt of an Election Noticeconfidentiality provisions.

Failure to Reimburse. Licensee may elect not to reimburse WU WUSTL for amounts due under Section 9.2 in respect to one or more Patent Rights patent and/or applications on a country-by -country basis only by giving WU WUSTL notice of such election at least thirty [***] (30[***]) days before the date on which the applicable cost or expense is to be incurred by WU WUSTL (each an “Election Notice”). For purposes of this Section 9.3, a cost or expense shall be deemed to be incurred by WU WUSTL on the earlier of (a) the date WU WUSTL actually pays the cost or expense, or (b) the date WU WUSTL becomes obligated to pay the cost or expense (which, for example, shall be the date WU WUSTL engages a third party to perform any service which gives rise to any such cost or expense). Any such Election Notice shall specify the Patent Rights patents and/or applications and the country of application to which such Election Notice relates (“Elected Patent Rights”)relates. [***] = Certain Confidential Information Omitted In the event any Election Notice is given by Licensee, (ax) the term “Patent Rights” shall be modified to exclude, as applicable, the Patent Rights patents and/or applications set forth in such Elected Patent Rightsnotice, (by) the term “Technical Information” shall be modified to exclude any research and development information, unpatented inventions, know-how, data, methods, and technical data and information no longer necessary for the exploitation of the license granted to the remaining Patent Rights, and (cz) the term “Tangible Research Property” shall be modified to exclude any and all research tools and other personal property that WU WUSTL may have provided to Licensee that is no longer necessary for the exploitation of the license granted to the remaining Patent Rights, in each instance as of the date the Election Notice is given. Accordingly, and for the avoidance of doubt, as of the date the Election Notice is given, the license to the Elected elected Patent Rights, the applicable Technical Information and the applicable Tangible Research Property granted to Licensee under Sections 2.1, 2.2 and 2.3 above shall terminate, and WU WUSTL shall be free, without any further obligation to Licensee whatsoever, to abandon the applications or patents subject to the Election Noticenotice, or to continue prosecution or maintenance, for WUWUSTL’s sole use and benefit, including a license to unrelated third parties, at WUWUSTL’s option. Licensee agrees to deliver to WUWUSTL, along with any Election Notice, all former Technical Information and former Tangible Research Property to which such Election Notice relates. For the avoidance of doubt, WU WUSTL will not refund any amounts paid under Section 9.2 to WU WUSTL prior to WUWUSTL’s receipt of an Election Notice.

Failure to Reimburse. Licensee may elect not to reimburse WU for amounts due under Section 9.2 in respect to one or more Patent Rights patent and/or applications only by giving WU notice of such election at least thirty ninety (3090) days before the date on which the applicable cost or expense is to be incurred by WU (each an “Election Notice”). For purposes of this Section 9.3, a cost or expense shall be deemed to be incurred by WU on the earlier of (a) the date WU actually pays the cost or expense, or (b) the date WU becomes obligated to pay the cost or expense (which, for example, shall be the date WU engages a third party to perform any the service which gives rise to a commitment to pay any such cost or expense). Any such Election Notice shall specify the Patent Rights patents and/or applications to which such Election Notice relates (“Elected Excluded Patent Rights”). In the event any Election Notice is given by Licensee, (ax) the term “Patent Rights” shall be modified to exclude, as applicable, exclude such Elected Excluded Patent Rights, (by) the term “Technical Information” shall be modified to exclude any research and development information, unpatented inventions, know-how, data, methods, and technical data and information no longer necessary for the exploitation of the license granted that relate solely to the remaining Excluded Patent RightsRights (“Excluded Technical Information”), and (cz) the term “Tangible Research Property” shall be modified to exclude any and all tangible research tools and other tangible personal property that WU may have provided to Licensee that is no longer necessary for the exploitation of the license granted relate solely to the remaining Excluded Patent RightsRights (“Excluded Tangible Research Property”), in each instance as of the date the Election Notice is given. Accordingly, and for the avoidance of doubt, as of the date the Election Notice is given, the license to the Elected Excluded Patent Rights, the applicable Excluded Technical Information and the applicable Excluded Tangible Research Property granted to Licensee under Sections 2.1, 2.2 and 2.3 above shall terminate, and WU shall be free, without any further obligation to Licensee whatsoever, to abandon the applications or patents subject to the Election Notice, or to continue prosecution or maintenance, for WU’s sole use and benefit, including a license to unrelated third partiesThird Parties, at WU’s optionoption and sole cost and expense. Licensee agrees to deliver to WU, along with any Election Notice, all Excluded Technical Information and Excluded Tangible Research Property to which such Election Notice relates. For the avoidance of doubt, WU will not refund any amounts paid under Section 9.2 to WU prior to WU’s receipt of an Election Notice.

Failure to Reimburse. Licensee may elect not to reimburse WU for amounts due under Section 9.2 in respect to one or more Patent Rights patent and/or applications only by giving WU XX notice of such election at least thirty ninety (3090) days before the date on which the applicable cost or expense is to be incurred by WU XX (each an “Election Notice”). For purposes of this Section 9.3, a cost or expense shall be deemed to be incurred by WU XX on the earlier of (a) the date WU actually pays the cost or expense, or (b) the date WU becomes obligated to pay the cost or expense (which, for example, shall be the date WU engages a third party to perform any the service which gives rise to a commitment to pay any such cost or expense). Any such Election Notice shall specify the Patent Rights patents and/or applications to which such Election Notice relates (“Elected Excluded Patent Rights”). In the event any Election Notice is given by Licensee, (ax) the term “Patent Rights” shall be modified to exclude, as applicable, exclude such Elected Excluded Patent Rights, (by) the term “Technical Information” shall be modified to exclude any research and development information, unpatented inventions, know-how, data, methods, and technical data and information no longer necessary for the exploitation of the license granted that relate solely to the remaining Excluded Patent RightsRights (“Excluded Technical Information”), and (cz) the term “Tangible Research Property” shall be modified to exclude any and all tangible research tools and other tangible personal property that WU XX may have provided to Licensee that is no longer necessary for the exploitation of the license granted relate solely to the remaining Excluded Patent RightsRights (“Excluded Tangible Research Property”), in each instance as of the date the Election Notice is given. Accordingly, and for the avoidance of doubt, as of the date the Election Notice is given, the license to the Elected Excluded Patent Rights, the applicable Excluded Technical Information and the applicable Excluded Tangible Research Property granted to Licensee under Sections 2.1, 2.2 and 2.3 above shall terminate, and WU XX shall be free, without any further obligation to Licensee whatsoever, to abandon the applications or patents subject to the Election Notice, or to continue prosecution or maintenance, for WU’s sole use and benefit, including a license to unrelated third partiesThird Parties, at WU’s optionXX’x option and sole cost and expense. Licensee agrees to deliver to WUXX, along with any Election Notice, all Excluded Technical Information and Excluded Tangible Research Property to which such Election Notice relates. For the avoidance of doubt, WU XX will not refund any amounts paid under Section 9.2 to WU prior to WU’s XX’x receipt of an Election Notice.