Common use of Filing and Maintenance Clause in Contracts

Filing and Maintenance. 5.1 The Licensee will pay the Licensor the Past Patent Costs (without making any deduction or set-off) representing the Licensee’s sole contribution to the patent costs incurred by the Licensor prior to the parties entering into this agreement, within thirty (30) Business Days of receiving an invoice from the Licensor dated after the Effective Date. 5.2 The Licensor shall keep the Licensee promptly and fully informed of the prosecution, status and official correspondence received in connection with the maintenance, prosecution and renewal of the Application. The Licensor shall appoint external patent attorneys for the prosecution, maintenance and renewal of the Application in consultation and agreement with the Licensee. The Licensee shall provide its comments on any patent actions that materially affect the Application in a timely manner, giving due consideration to patent office deadlines associated with such actions. The Licensor will, in consultation with the Licensee, and giving reasonable consideration to the views of the Licensee take all reasonable endeavours to prosecute, maintain, and renew the Application throughout the duration of this Licence Agreement to obtain the scope of protection most reasonably possible having regard to the Licensee’s views in the consultation. The Licensee will, within thirty (30) Business Days of receiving an invoice from the Licensor, reimburse the Licensor for all external lawyers and patent attorney fees costs and disbursements properly and reasonably (having regard to the Licensee’s requests during consultations on prosecution) incurred in respect of the prosecution, maintenance or renewal of the Application. 5.3 The Licensee shall inform the Licensor no later than the Effective Date of the territories within the scope of the PCT that it wishes to be covered in the National Phase of the Application but which shall as a minimum include those of the Key Territories (which, in respect of the European territory may be covered by a European patent) where the claimed invention of the original Application is reasonably considered by the Licensee (based on patent attorney advice) to be granted and patentable subject matter pursuant to local patent laws. In the event that the Licensee does not give the advance notice, the Licensor shall then be entitled to proceed with filing the applications [*] in up to [*] territories (with a European Patent classified as one territory) as it may in its sole discretion decide. Where notice is given by the Licensee, the Licensor shall instruct the prosecuting patent attorneys to enter the Application into the National Phase for each identified territory, and Licensee shall only be responsible for the prosecution, maintenance and renewal fees for those notified territories. 5.4 The Licensee shall be entitled to remove any one or more of the countries from the list of territories provided by the Licensee under clause 5.3 at any time by giving not less than [*] notice to the Licensor. If the Application is proceeding under the PCT then such notice may not be given any earlier than the date for commencement of the National Phase filing. For the avoidance of doubt the Licensee shall remain liable for the costs mentioned in clause 5.2 that arise or are incurred by the Licensor during the said notice period in respect of the countries being removed. However, after expiry of the [*], if Licensor continues to maintain the prosecution, maintenance or renewal of the Application in those countries notified by Licensee, such costs shall be at [*] cost and expense.

Filing and Maintenance. 5.1 The Licensee will pay the Licensor the Past Patent Costs (without making any deduction or set-off) representing the Licensee’s sole contribution to the patent costs incurred by the Licensor prior to the parties entering into this agreement, within thirty (30) Business Days of receiving an invoice from the Licensor dated after the Effective Date. 5.2 The Licensor shall keep the Licensee promptly and fully informed of the prosecution, status and official correspondence received in connection with the maintenance, prosecution and renewal of the Application. The Licensor shall appoint external patent attorneys for the prosecution, maintenance and renewal of the Application in consultation and agreement with the Licensee. The Licensee shall provide its comments on any patent actions that materially affect the Application in a timely manner, giving due consideration to patent office deadlines associated with such actions. The Licensor will, in consultation with the Licensee, and giving reasonable consideration to the views of the Licensee take all reasonable endeavours to prosecute, maintain, and renew the Application throughout the duration of this Licence Agreement to obtain the scope of protection most reasonably possible having regard to the Licensee’s views in the consultation. The Licensee will, within thirty (30) Business Days of receiving an invoice from the Licensor, reimburse the Licensor for all external lawyers and patent attorney fees costs and disbursements properly and reasonably (having regard to the Licensee’s requests during consultations on prosecution) incurred in respect of the prosecution, maintenance or renewal of the Application. 5.3 The Licensee shall inform the Licensor no later than the Effective Date of the territories within the scope of the PCT that it wishes to be covered in the National Phase of the Application but which shall as a minimum include those of the Key Territories (which, in respect of the European territory may be covered by a European patent) where the claimed invention of the original Application is reasonably considered by the Licensee (based on patent attorney advice) to be granted and patentable subject matter pursuant to local patent laws). In the event that the Licensee does not give the advance notice, the Licensor shall then be entitled to proceed with filing the applications [*] in up to [*] territories (with a European Patent classified as one territory) as it may in its sole discretion decide. Where notice is given by the Licensee, the Licensor shall instruct the prosecuting patent attorneys to enter the Application into the National Phase for each identified territory, and Licensee shall only be responsible for the prosecution, maintenance and renewal fees for those notified territories. 5.4 The Licensee shall be entitled to remove any one or more of the countries from the list of territories provided by the Licensee under clause 5.3 at any time by giving not less than [*] notice to the Licensor. If the Application is proceeding under the PCT then such notice may not be given any earlier than the date for commencement of the National Phase filing. For the avoidance of doubt the Licensee shall remain liable for the costs mentioned in clause 5.2 that arise or are incurred by the Licensor during the said notice period in respect of the countries being removed. However, after expiry of the [*]] period, if Licensor continues to maintain the prosecution, maintenance or renewal of the Application in those countries notified by Licensee, such costs shall be at [*] cost and expense.

Filing and Maintenance. 5.1 The Licensee will pay the Licensor Licensors the Past Patent Costs (without making any deduction or set-off) representing the Licensee’s sole contribution to the patent costs incurred by the Licensor prior to the parties entering into this agreement, within thirty (30) Business Days days of receiving an invoice from one of the Licensor dated after Licensors following the Effective DateCovid-19 Public Health Emergency Period. 5.2 The Licensor shall keep Licensors will, in consultation with the Licensee promptly and fully informed at the Licensee’s cost, prosecute, use all reasonable endeavours to maintain, and renew the Applications (including any patent applications filed for an Inventor Improvement) throughout the duration of this agreement. The Licensors will give all reasonable consideration to the views of the prosecutionLicensee and will not unreasonably refuse to prosecute, status and official correspondence received maintain or renew the Applications provided always that the Licensee agrees to bear the costs of such action in connection accordance with the maintenance, prosecution and renewal of the Applicationthis clause 5.2. The Licensor shall appoint external Licensee will reimburse the Licensors for all costs, filing fees, lawyers’ and patent attorneys for agents’ fees, expenses and outgoings of whatever nature incurred by the Licensors in the prosecution, maintenance and renewal of the Application (including those incurred in consultation opposition proceedings before the European Patent Office or in ex parte re-examination or inter partes review proceedings in the United States Patent and agreement with the Licensee. The Licensee shall provide its comments on Trademark Office (“USPTO”) or any similar proceedings before any patent actions that materially affect office challenging the Application in a timely manner, giving due consideration to patent office deadlines associated with such actions. The Licensor will, in consultation with the Licensee, and giving reasonable consideration to the views grant or validity of the Licensee take all reasonable endeavours to prosecute, maintain, and renew the Application throughout the duration of this Licence Agreement to obtain the scope of protection most reasonably possible having regard to the Licensee’s views in the consultation. The Licensee will, Application) within thirty (30) Business Days days of receiving an invoice from one of the Licensor, reimburse Licensors. The Licensors shall be entitled to make it a condition of any action of the Licensor for all external lawyers and patent attorney fees Licensors under this clause 5.2 that the Licensee provides the Licensors with sufficient money in advance to cover the costs and disbursements properly and reasonably (having regard likely to the Licensee’s requests during consultations on prosecution) be incurred in respect of the prosecution, maintenance or renewal of the Applicationaction. 5.3 Where any of the Applications is prosecuted in the USPTO and the Licensee is a small business concern as defined under the US Small Business Act (15USC632) the Licensors intend to pay reduced USPTO patent fees under US patent law 35USC 41(h)(1). The Licensee will notify the Licensors as soon as reasonably possible if it or a sub-licensee ceases to be a small business concern as defined under the US Small Business Act (15USC632) or becomes aware of any other reason why it would not qualify for reduced USPTO patent fees under US patent law 35USC 41(h)(1). 5.4 The Licensee shall inform the Licensor no later Licensors not less than six (6) months in advance of the Effective Date National Phase filing deadline (noted in Schedule 2) of the territories within the scope of the PCT that it wishes to be covered in the National Phase of the Application but which shall as a minimum include those of the Key Territories (which, in respect of the European territory may be covered by a European patent) where the claimed invention of the original Application is reasonably considered by the Licensee (based on patent attorney advice) to be granted and patentable subject matter pursuant to local patent lawsApplications. In the event that the Licensee does not give the required minimum of six months advance notice, notice the Licensor Licensors shall then be entitled to proceed with filing the applications [*] Applications at the Licensee’s cost in up to [*] whichever territories (with a European Patent classified as one territory) as it may in its sole discretion decide. Where notice is given by the Licensee, the Licensor shall instruct the prosecuting patent attorneys to enter the Application into the National Phase for each identified territory, and Licensee shall only be responsible for the prosecution, maintenance and renewal fees for those notified territories. 5.4 5.5 The Licensee shall be entitled to remove any one or more of the countries from the list of territories provided by the Licensee under clause 5.3 Territory at any time by giving not less than [*] six months’ notice to the LicensorLicensors. If any of the Application Applications is proceeding under the PCT then such notice may not be given any earlier than the date for commencement of the National Phase filing. For the avoidance of doubt the Licensee shall remain liable for the costs mentioned in clause 5.2 that arise or are incurred by the Licensor Licensors during the said notice period in respect of the countries being removed. However, after expiry . 5.6 The Licensors and the Licensee will carry out an annual review of the [*], if Licensor continues to maintain the prosecution, maintenance or renewal prosecution of the Application Applications within thirty (30) days of the end of each Licence Year and after the end of the second Licence Year. The Licensors will consider with the Licensee at each annual review whether it is appropriate for the Licensee to take over the prosecution and maintenance of the Applications provided that in those countries notified by Licenseeall circumstances the Applications will be prosecuted in the Peoples Republic of China unless OUSST has provided its written consent (such consent not to be unreasonably withheld) for OUI or the Licensee to discontinue the prosecution and/or maintenance of the Applications in that territory. 5.7 In the event that the Licensors elect to discontinue the prosecution and/or maintenance of any of the Applications, such costs the Licensee shall be at [*] cost have the right but not the obligation to take over prosecution and expensemaintenance of the Applications the Licensors have elected to discontinue.

Filing and Maintenance. 5.1 The Licensee will pay the Licensor the Past Patent Costs (without making any deduction or set-off) representing the Licensee’s sole contribution to the patent costs incurred by the Licensor prior to the parties entering into this agreement, within thirty (30) Business Days of receiving an invoice from the Licensor dated after the Effective Date. 5.2 The Licensor shall keep the Licensee promptly and fully informed of the prosecution, status and official correspondence received in connection with the maintenance, prosecution and renewal of the Application. The Licensor shall appoint external patent attorneys for the prosecution, maintenance and renewal of the Application in consultation and agreement with the Licensee. The Licensee shall provide its comments on any patent actions that materially affect the Application in a timely manner, giving due consideration to patent office deadlines associated with such actions. The Licensor will, in consultation with the Licensor in accordance with clause 0 and at the Licensee’s cost, and giving reasonable consideration to the views of the Licensee take all reasonable endeavours to prosecutefile, maintain, maintain and renew the Application. In addition to the above, in relation to the Application throughout the duration Licensee shall: 5.1.1 copy Licensor on all material correspondence relating to the Application and provide Licensor with a reasonable opportunity to comment on such material correspondence before responding to the same; 5.1.2 consult with the Licensor prior to making any material decisions in relation to the Application and obtain Licensor’s prior written consent to such material decisions (such consent not to be unreasonably withheld, delayed or conditioned); and 5.1.3 give the Licensor adequate advance notice of this Licence Agreement its intention to obtain file any patent application, to designate any country in a patent application, or to take any material decision in relation to a patent application or granted patent, and will provide to Licensor copies of all relevant documents; 5.1.4 allow representatives of the scope Licensor and any professional advisors of protection most reasonably possible having regard the Licensor to attend meetings with the Licensee’s views in patent professionals; 5.1.5 provide the consultation. The Licensor with adequate notice of any formal hearings or other proceedings which the Licensee is entitled to attend and will, within thirty (30) Business Days if possible, permit representatives of receiving an invoice from the Licensor, reimburse the Licensor for to attend as well; 5.1.6 without limiting the foregoing, the Licensor will have the right to review the text of all external lawyers patent specifications, claims and any other documents filed at any stage of a patent attorney fees costs and disbursements properly and reasonably application or of any opposition, re-examination, interference or other similar procedure relating to a granted or pending patent; 5.1.7 the Licensee will (having regard or will procure that its patent professionals will) provide copies of all official correspondence from patent offices relating to the Licensee’s requests during consultations on prosecution) incurred in respect Licensed Technology to the Licensor within a reasonable time of receipt. Such correspondence shall include, without limitation, renewal notices; provided always that the prosecution, maintenance or renewal of the ApplicationLicensee may act without further consultation if patent rights would otherwise be lost. 5.3 5.2 The Licensee shall inform the Licensor no later not less than [**] months in advance of the Effective Date National Phase filing deadline (noted in 0) of the territories within the scope of the PCT that it wishes to be covered in the National Phase of the Application but which shall as a minimum include those of the Key Territories (which, in respect of the European territory may be covered by a European patent) where the claimed invention of the original Application is reasonably considered by the Licensee (based on patent attorney advice) to be granted and patentable subject matter pursuant to local patent lawsApplication. In the event that the Licensee does not give the advance noticeLicensor wishes to proceed in countries other than those chosen by Licensee, the Licensor shall then be entitled to proceed with filing the applications [*] at the Licensor’s cost in up to [*] territories (with a European Patent classified such territories, which will be deemed as one territory) as it may in its sole discretion decide. Where notice is given by of the Licensee, the date of Licensor shall instruct the prosecuting patent attorneys to enter the Application into the filing National Phase for each identified territory, and Licensee shall only applications in these territories to be responsible for excluded from the prosecution, maintenance and renewal fees for those notified territories. 5.4 Territory. The Licensee shall be entitled to remove any one or more of the countries from the list of territories provided by the Licensee under clause 5.3 Territory at any time by giving not less than [**] months notice to the Licensor. If the Application is proceeding under the PCT then such notice may not be given any earlier than the date for commencement of the National Phase filing. For the avoidance of doubt the Licensee shall remain liable for the costs mentioned in clause 5.2 0 that arise or are incurred by the Licensor during the said notice period in respect of the countries being removed. However, after expiry of the [*], if The Licensor continues may at its sole discretion elect to maintain the prosecutionApplication in the countries chosen to be removed from the Territory by the Licensee, whereupon the Licensor will become responsible for all costs incurred in the prosecution and maintenance or renewal of the Application in those countries notified by countries. 5.3 The Licensor shall, at the cost of the Licensee provide to the Licensee, such costs shall and so far as is practicable procure that the University provides to the Licensee all reasonable assistance, and executes all documents reasonable necessary for the Licensee to be at [*] cost able to file, prosecute, defend and expenseenforce the Application.