Common use of Filing Prosecution and Maintenance of Patent Rights Clause in Contracts

Filing Prosecution and Maintenance of Patent Rights. 3.1 PALOMAR shall continue to be responsible for the preparation, filing, prosecution and maintenance of all patent applications and patents included in PATENT RIGHTS, and for all costs incurred therefor (“Costs”). PALOMAR may elect not to continue to prosecute or maintain any U.S. or foreign patent application or patent contained within the PATENT RIGHTS upon sixty (60) days advance written notice to GENERAL, and PALOMAR shall thereafter be relieved of the obligation to pay any additional Costs regarding such U.S. or foreign patent application or patent incurred after the expiration of such sixty (60) day notice period. After the expiration of such sixty (60) day notice period, such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and GENERAL shall be free to file, prosecute and maintain and license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. 3.2 Notwithstanding Paragraph 3.1, in the event a party desires to obtain PATENT RIGHTS that would claim only inventions that are wholly outside of the LICENSE FIELD (“NON-LICENSE FIELD PATENT RIGHTS”), then such party shall notify the other party, which notice shall identify such inventions and the inventors thereof. During the thirty (30) day period following such other party’s receipt of such notice, the parties shall discuss in good faith the content of such inventions and the inventorship thereof, and if the parties disagree on and cannot resolve such issues within such 30-day period, either party shall have the right to have the dispute resolved in accordance with Paragraph 9.9 (with such 30-day period replacing the initial 60-day resolution period in Paragraph 9.9). During such 30-day period or dispute resolution, each party shall not seek any claims covering such inventions. The party that desires to obtain such NON-LICENSE FIELD PATENT RIGHTS shall be responsible for the preparation, filing, prosecution and maintenance of any patent applications and patents included in such NON-LICENSE FIELD PATENT RIGHTS (consistent with the agreement of the parties resulting from such discussions or dispute resolution), and for all Costs incurred therefor. 3.3 With respect to any PATENT RIGHT (whether covered under Paragraph 3.1 or 3.2) that is or would be jointly owned by PALOMAR and GENERAL, each document or a draft thereof pertaining to the filing, prosecution, or maintenance of such PATENT RIGHT, including but not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to the non-filing party as follows. The filing party shall instruct its outside counsel to provide such documents simultaneously to the non-filing party and such filing party. If such counsel fails to deliver such documents simultaneously to such non-filing party, then such filing party shall promptly deliver a copy of such documents to such non-filing party. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to allow for review and comment by such non-filing party. Such filing party shall use its commercially reasonable efforts to notify such non-filing party prior to engaging in any prosecution action with respect to any such PATENT RIGHT (for clarity, including without limitation the filing of any patent applications related by priority to any such PATENT RIGHT), and such non-filing party shall have the right to provide comments and recommendations on such action, and such filing party agrees to consider in good faith such non-filing party’s recommendations.

Filing Prosecution and Maintenance of Patent Rights. 3.1 PALOMAR 14.2.1 AMRI shall continue be responsible, using outside patent counsel free of ethical conflicts and mutually agreed upon by AMRI and BMS, for the preparation, filing, prosecution (including, without limitation, any interferences, reissue proceedings and reexaminations) and maintenance of the AMRI Patent Rights, including AMRI Patent Rights claiming Joint Inventions. 14.2.2 Subject to Section 14.2.8, starting on the Effective Date and during the Combined Period BMS shall be responsible for the costs and expenses incurred by AMRI with respect to the preparation, filing, prosecuting and maintenance of AMRI Patent Rights and thereafter the Parties shall equally share such costs and expenses of AMRI Patent Rights, except for AMRI Patent Rights that are solely directed to Retained Products and/or solely directed to Released Products for which such costs and expenses shall be paid only by BMS and only by AMRI, respectively. BMS may, at its option and with prior written notice to AMRI, discontinue its payment obligations for costs incurred in connection with the filing, prosecution and maintenance of one or more particular patent(s) or patent application(s) within the AMRI Patent Rights in one or more countries. It is understood that BMS’ rights in accordance with this Agreement, under such patent or patent application in such country, would terminate (such patent or patent application hereinafter, a “Cost-terminated” patent or patent application), but that all remaining rights and licenses under all other patent(s) and patent application(s) of the AMRI Patent Rights would remain in effect. It is also understood that BMS will be offered the opportunity to assume all costs for the filing, prosecution, and maintenance of any patent or patent application claiming priority directly or indirectly from such Cost-terminated patent or patent application, and that where all such costs are assumed by BMS, BMS will be afforded all rights and licenses contemplated by this Agreement for the AMRI Patent Rights (other than Cost-terminated patents or patent applications) in connection with such patent or patent application. 14.2.3 AMRI shall provide BMS with quarterly updates of the filing, prosecution and maintenance status for each of the AMRI Patent Rights. 14.2.4 The Parties shall cooperate fully in the preparation, filing, prosecution and maintenance of all patent applications and patents included in PATENT RIGHTSthe AMRI Patent Rights. The Parties agree to confer, and for all costs incurred therefor (“Costs”). PALOMAR may elect not to continue to prosecute meet as necessary, through their respective in-house patent counsels or maintain any U.S. or foreign patent application or patent contained within the PATENT RIGHTS upon sixty (60) days advance written notice to GENERALother in-house legal representatives, and PALOMAR shall thereafter be relieved of the obligation to pay any additional Costs regarding such U.S. or foreign patent application or patent incurred after the expiration of such sixty (60) day notice period. After the expiration of such sixty (60) day notice period, such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and GENERAL shall be free to file, prosecute and maintain and license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. 3.2 Notwithstanding Paragraph 3.1, in the event a party desires to obtain PATENT RIGHTS that would claim only inventions that are wholly together with outside of the LICENSE FIELD (“NON-LICENSE FIELD PATENT RIGHTS”), then such party shall notify the other party, which notice shall identify such inventions and the inventors thereof. During the thirty (30) day period following such other party’s receipt of such notice, the parties shall discuss in good faith the content of such inventions and the inventorship thereof, and if the parties disagree on and cannot resolve such issues within such 30-day period, either party shall have the right to have the dispute resolved counsel selected in accordance with Paragraph 9.9 Section 14.2.1 in order to maximize the potential for different patents to separately Cover, respectively, Retained Compounds (or compounds likely to be Retained Compounds) and Released Compounds (or compounds likely to be Released Compounds), such as by, without limitation, the filing of appropriate divisional or continuation applications, or original applications, Covering particular subject matter. 14.2.5 AMRI shall reasonably consult with and cooperate with BMS with respect to the preparation, filing, prosecution and maintenance of the AMRI Patent Rights. Such consultation and cooperation shall include, but not be limited to, AMRI providing BMS with a copy of each patent application included in the AMRI Patent Rights that AMRI intends to file in sufficient time for BMS to provide its comments with respect to such 30-day period replacing patent application before such patent application is filed by AMRI, and providing BMS with a copy of all material official correspondence to or from patent offices in sufficient time for BMS to provide its comments with respect to such correspondence before a response to any such correspondence is filed by AMRI. 14.2.6 BMS may file a notice with governmental patent offices of the initial 60-day resolution period in Paragraph 9.9). During such 30-day period or dispute resolution, each party shall not seek any claims covering such inventions. The party that desires exclusive license to obtain such NON-LICENSE FIELD PATENT RIGHTS the AMRI Patent Rights granted to BMS hereunder. 14.2.7 BMS shall be responsible for the preparation, filing, prosecution (including without limitation, any interferences, reissue proceedings and reexaminations) and maintenance of any patent applications the BMS Licensed Patent Rights, except for those claiming Joint Inventions (which are handled pursuant to Sections 14.2.1 and patents included 14.2.2) and costs associated in such NON-LICENSE FIELD PATENT RIGHTS (consistent with the agreement of the parties resulting from such discussions or dispute resolution), and for all Costs incurred thereforconnection therewith. 3.3 With respect to any PATENT RIGHT (whether covered under Paragraph 3.1 or 3.2) that is or would be jointly owned by PALOMAR and GENERAL, each document or a draft thereof pertaining to the filing, prosecution, or maintenance of such PATENT RIGHT, including but not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to the non-filing party as follows. The filing party shall instruct its outside counsel to provide such documents simultaneously to the non-filing party and such filing party. If such counsel fails to deliver such documents simultaneously to such non-filing party, then such filing party shall promptly deliver a copy of such documents to such non-filing party. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to allow for review and comment by such non-filing party. Such filing party shall use its commercially reasonable efforts to notify such non-filing party prior to engaging in any prosecution action with respect to any such PATENT RIGHT (for clarity, including without limitation the filing of any patent applications related by priority to any such PATENT RIGHT), and such non-filing party shall have the right to provide comments and recommendations on such action, and such filing party agrees to consider in good faith such non-filing party’s recommendations.

Filing Prosecution and Maintenance of Patent Rights. 3.1 PALOMAR (a) Subject to Section 5.2(b), SwRI shall continue to be responsible for and control the preparation, filing, prosecution and maintenance of all patents and patent applications within the Patent Rights, at SwRI’s sole cost and expense; provided, however, that SwRI shall (i) provide all information reasonably requested by Flexion with respect to the Patent Rights, (ii) promptly notify Flexion in writing with respect to all significant developments regarding the Patent Rights, (iii) promptly provide Flexion with a copy of each material communication from any patent authority regarding the Patent Rights, and (iv) provide Flexion with drafts of each material filing (including without limitation draft patent applications and patents included responses to office actions and similar filings) with respect to the Patent Rights in PATENT RIGHTS, and for all costs incurred therefor (“Costs”). PALOMAR may elect not to continue to prosecute or maintain any U.S. or foreign patent application or patent contained within the PATENT RIGHTS upon sixty (60) days a reasonable amount of time in advance written notice to GENERAL, and PALOMAR shall thereafter be relieved of the obligation anticipated filing date and shall, prior to pay any additional Costs regarding filing, revise such U.S. or foreign patent application or patent incurred after documents to reflect Flexion’s reasonable comments. (b) In the expiration of such sixty (60) day notice period. After the expiration of such sixty (60) day notice period, such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and GENERAL shall be free event that SwRI determines not to file, prosecute and maintain and license its rights to that particular U.S. or foreign continue prosecution of any patent or patent application or patent to any other party on any terms. 3.2 Notwithstanding Paragraph 3.1within the Patent Rights, in the event a party desires to obtain PATENT RIGHTS that would claim only inventions that are wholly outside of the LICENSE FIELD (“NON-LICENSE FIELD PATENT RIGHTS”), then such party SwRI shall notify the other party, which provide Flexion written notice shall identify such inventions and the inventors thereof. During the thereof at least thirty (30) day period following such other party’s days before the applicable deadline. Upon receipt of such notice, the parties shall discuss in good faith the content of such inventions and the inventorship thereof, and if the parties disagree on and cannot resolve such issues within such 30-day period, either party Flexion shall have the right right, but not the obligation, at its expense, to have the dispute resolved in accordance with Paragraph 9.9 (with such 30-day period replacing the initial 60-day resolution period in Paragraph 9.9). During such 30-day period or dispute resolution, each party shall not seek any claims covering such inventions. The party that desires to obtain such NON-LICENSE FIELD PATENT RIGHTS shall be responsible assume responsibility for the preparation, filing, prosecuting, and maintaining such patents and patent applications. If Flexion decides to assume such responsibility, in its sole discretion, it shall so notify SwRI in writing. (c) As soon as practicable after receipt of the notice from Flexion described in Section 5.2(b), SwRI shall transfer the existing, complete patent files for all applicable patents and patent applications to Flexion, shall file all documents necessary to transfer correspondence with the U.S. Patent and Trademark Office and other applicable patent authorities to Flexion and shall give Flexion’s patent counsel power of attorney thereto. SwRI shall cooperate with Flexion in the transfer of all prosecution and maintenance of any patent applications and patents included in such NON-LICENSE FIELD PATENT RIGHTS responsibilities relating to the Patent Rights. (consistent d) Each Party shall fully cooperate with the agreement other Party to execute all lawful papers and instruments and to make all rightful oaths and declarations as may be necessary or useful in the preparation and prosecution of Patent Rights. -6- ***Confidential Treatment Requested; Omitted portions filed with the parties resulting from such discussions or dispute resolution), and for all Costs incurred therefor. 3.3 With respect to any PATENT RIGHT (whether covered under Paragraph 3.1 or 3.2) that is or would be jointly owned by PALOMAR and GENERAL, each document or a draft thereof pertaining to the filing, prosecution, or maintenance of such PATENT RIGHT, including but not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to the non-filing party as follows. The filing party shall instruct its outside counsel to provide such documents simultaneously to the non-filing party and such filing party. If such counsel fails to deliver such documents simultaneously to such non-filing party, then such filing party shall promptly deliver a copy of such documents to such non-filing party. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to allow for review and comment by such non-filing party. Such filing party shall use its commercially reasonable efforts to notify such non-filing party prior to engaging in any prosecution action with respect to any such PATENT RIGHT (for clarity, including without limitation the filing of any patent applications related by priority to any such PATENT RIGHT), and such non-filing party shall have the right to provide comments and recommendations on such action, and such filing party agrees to consider in good faith such non-filing party’s recommendations.SEC

Filing Prosecution and Maintenance of Patent Rights. 3.1 PALOMAR 5.2.1 HAP-TM- MARKER PATENT RIGHTS FOR NON-PROPRIETARY GENES. Genaissance shall continue to be responsible have sole responsibility for and control over the preparation, filing, prosecution and maintenance of all patent applications the HAP-TM- Marker Patent Rights for Non-Proprietary Genes, at Genaissance's expense. Genaissance will seek method claims covering the detection of HAP-TM- Markers for such genes and/or their component SNPs and patents included composition of matter claims covering genotyping oligonucleotides for use in PATENT RIGHTSthe detection methods. Genaissance will file, prosecute and maintain, to the extent reasonable, such HAP-TM- Marker Patent Rights in the United States, Europe, Japan and other countries. In the event that (i) Genaissance determines that it will not seek Patent Rights with respect to-any HAP-TM- Marker within a HAP-TM- Marker Combination licensed to AstraZeneca pursuant to Article 2 hereof or (ii) Genaissance files Patent Rights for all costs incurred therefor (“Costs”). PALOMAR may elect such HAP-TM- Markers in one or more countries but subsequently determines, on a country-by-country basis, that it will not to continue to file, prosecute or maintain any U.S. HAP-TM- Marker Patent Right, or foreign patent application or patent contained within the PATENT RIGHTS upon sixty (60iii) elects not to file in countries which AstraZeneca elects to seek protection, then Genaissance shall provide not less than [**] days advance written notice of its decision to GENERAL, AstraZeneca and PALOMAR shall thereafter be relieved of the obligation to pay any additional Costs regarding such U.S. or foreign patent application or patent incurred after the expiration other licensee of such sixty (60) day notice periodHAP-TM- Marker Patent Rights. After the expiration AstraZeneca and any other licensee of such sixty (60) day notice period, such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and GENERAL shall be free to file, prosecute and maintain and license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. 3.2 Notwithstanding Paragraph 3.1, in the event a party desires to obtain PATENT RIGHTS that would claim only inventions that are wholly outside of the LICENSE FIELD (“NONHAP-LICENSE FIELD PATENT RIGHTS”), then such party shall notify the other party, which notice shall identify such inventions and the inventors thereof. During the thirty (30) day period following such other party’s receipt of such notice, the parties shall discuss in good faith the content of such inventions and the inventorship thereof, and if the parties disagree on and cannot resolve such issues within such 30-day period, either party TM- Marker Patent Rights shall have the right option to have require Genaissance to prosecute such HAP-TM- Marker Patent Rights, in Genaissance's name, at the dispute resolved in accordance with Paragraph 9.9 (with such 30expense of AstraZeneca and any other licensees that agree to share the costs thereof pro rata. 5.2.2 HAP-day period replacing the initial 60-day resolution period in Paragraph 9.9). During such 30-day period or dispute resolution, each party shall not seek any claims covering such inventions. The party that desires to obtain such NON-LICENSE FIELD TM- MARKER PATENT RIGHTS FOR PROPRIETARY GENES. AstraZeneca shall be responsible have sole responsibility for and control over the preparation, filing, prosecution and maintenance of any patent applications the HAP-TM- Marker Patent Rights for Proprietary Genes, at AstraZeneca's expense. AstraZeneca will seek method claims covering the detection of HAP-TM- Markers for such genes and/or their component SNPs and patents included composition of matter claims covering genotyping oligonucleotides for use in the detection methods. AstraZeneca will file, prosecute and maintain, to the extent reasonable, such NONHAP-LICENSE FIELD PATENT RIGHTS TM- Marker Patent Rights in [**] other countries. In the event that (consistent i) AstraZeneca determines that it will not seek Patent Rights with the agreement of the parties resulting from such discussions or dispute resolution), and for all Costs incurred therefor. 3.3 With respect to any HAP-TM- Markers within a HAP-TM- Marker Combination for which Genaissance has an option to license, or has exercised such option, pursuant to Article 2 hereof, or (ii) AstraZeneca files Patent Rights for such HAP-TM- Markers in one or more countries but subsequently determines, on a country-by-country basis, that it will not file, prosecute or maintain any HAP-TM- Marker Patent Right, or (iii) elects not to file in countries which AstraZeneca elects to seek protection, then AstraZeneca shall provide not less than [**]days notice of its decision to Genaissance. Genaissance shall have the option to require AstraZeneca to prosecute such HAP-TM- Marker Patent Rights, in AstraZeneca's name, at the expense of Genaissance. 5.2.3 HAP-TM- MARKER ASSOCIATION PATENT RIGHT (whether covered under Paragraph 3.1 or 3.2) that is or would be jointly owned RIGHTS. AstraZeneca shall have sole responsibility for and control over the filing, prosecution and maintenance of the HAP-TM- Marker Association Patent Rights, at AstraZeneca's expense. AstraZeneca will seek method claims covering the use of HAP-TM- Marker Combinations for all prognostic and diagnostic purposes supported by PALOMAR the particular HAP-TM- Marker Association. AstraZeneca will file, prosecute and GENERALmaintain, each document or a draft thereof pertaining to the extent reasonable, such HAP-TM- Marker Association Patent Rights in [**] other countries. Genaissance shall make its employees available to AstraZeneca to assist in the preparation, filing, prosecution, or and maintenance of such PATENT RIGHT, including but Patent Rights for those HAP-TM- Marker Associations disclosed to Genaissance pursuant to Section 5.1.4. In the event that (i) AstraZeneca determines that it will not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to the non-filing party as follows. The filing party shall instruct its outside counsel to provide such documents simultaneously to the non-filing party and such filing party. If such counsel fails to deliver such documents simultaneously to such non-filing party, then such filing party shall promptly deliver a copy of such documents to such non-filing party. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to allow for review and comment by such non-filing party. Such filing party shall use its commercially reasonable efforts to notify such non-filing party prior to engaging in any prosecution action seek Patent Rights with respect to any HAP-TM- Marker Association for which Genaissance has an option to license, or has exercised such PATENT RIGHT option, pursuant to Article 2 .hereof, or (ii.) AstraZeneca files Patent Rights for claritysuch HAP-TM- Marker Association in one or more countries but subsequently determines, including without limitation the filing on a country-by-country basis, that it will not file, prosecute or maintain any HAP-TM- Marker Association Patent Right, or (iii) elects not to file in countries which Genaissance elects to seek protection, then AstraZeneca shall provide not less than [**] days notice of any patent applications related by priority its decision to any such PATENT RIGHT), and such non-filing party Genaissance. Genaissance shall have the right option to provide comments and recommendations on require AstraZeneca to prosecute such actionHAP-TM- Marker Association Patent Right, and such filing party agrees to consider in good faith such non-filing party’s recommendationsAstraZeneca's name, at the expense of Genaissance.

Filing Prosecution and Maintenance of Patent Rights. 3.1 GENERAL shall be responsible for the preparation, filing, prosecution and maintenance of all patent applications and patents included in the PHOTON RECYCLING PATENT RIGHTS and the ‘568 PATENT FAMILY PATENT RIGHTS. Subject to Paragraph 3.2, PALOMAR shall reimburse GENERAL for all reasonable costs (“Costs”) incurred by GENERAL for the preparation, filing, prosecution and maintenance of all ‘568 PATENT FAMILY PATENT RIGHTS by paying such Costs directly to legal counsel upon receipt of invoices from GENERAL or legal counsel. 3.2 With respect to any ‘568 PATENT FAMILY PATENT RIGHT, each document or a draft thereof pertaining to the filing, prosecution, or maintenance of such PATENT RIGHT, including but not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to PALOMAR as follows. GENERAL shall instruct its outside counsel to provide such documents simultaneously to GENERAL and PALOMAR. If such counsel fails to deliver such documents simultaneously to PALOMAR, then GENERAL shall promptly deliver a copy of such documents to PALOMAR. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to allow for review and comment by PALOMAR. If as a result of the review of any such document, PALOMAR shall elect not to pay or continue to pay the Costs for any such ‘568 PATENT FAMILY PATENT RIGHT, PALOMAR shall so notify GENERAL within thirty (30) days of PALOMAR’s receipt of such document and PALOMAR shall thereafter be relieved of the obligation to pay any additional Costs regarding such PATENT RIGHT incurred after the receipt of such notice by GENERAL. Such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and GENERAL shall be free to license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. GENERAL shall use its commercially reasonable efforts to notify PALOMAR prior to engaging in any prosecution action with respect to any ‘568 PATENT FAMILY PATENT RIGHT (for clarity, including without limitation the filing of any patent applications related by priority to any such PATENT RIGHT) and PALOMAR shall have the right to provide comments and recommendations on any action proposed to be taken by GENERAL and GENERAL agrees to consider in good faith PALOMAR’s recommendations. Where a course of action is followed on a ‘568 PATENT FAMILY PATENT RIGHT which is both contrary to PALOMAR’s recommendations and which increases Costs over such recommendation, PALOMAR shall only be responsible for Costs which would have been incurred had its recommendation been followed. 3.3 PALOMAR shall continue to be responsible for the preparation, filing, prosecution and maintenance of all patent applications and patents included in all ‘959 PATENT FAMILY PATENT RIGHTS, and for all costs Costs incurred therefor (“Costs”)therefor. PALOMAR may elect not to continue to prosecute or maintain any U.S. or foreign patent application or patent contained within the ‘959 PATENT FAMILY PATENT RIGHTS upon sixty (60) days advance written notice to GENERAL, and PALOMAR shall thereafter be relieved of the obligation to pay any additional Costs regarding such U.S. or foreign patent application or patent incurred after the expiration of such sixty (60) day notice period. After the expiration of such sixty (60) day notice period, such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and GENERAL shall be free to file, prosecute and maintain said patent application and to license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. 3.2 Notwithstanding Paragraph 3.1, in the event a party desires to obtain PATENT RIGHTS that would claim only inventions that are wholly outside of the LICENSE FIELD (“NON-LICENSE FIELD PATENT RIGHTS”), then such party shall notify the other party, which notice shall identify such inventions and the inventors thereof. During the thirty (30) day period following such other party’s receipt of such notice, the parties shall discuss in good faith the content of such inventions and the inventorship thereof, and if the parties disagree on and cannot resolve such issues within such 30-day period, either party shall have the right to have the dispute resolved in accordance with Paragraph 9.9 (with such 30-day period replacing the initial 60-day resolution period in Paragraph 9.9). During such 30-day period or dispute resolution, each party shall not seek any claims covering such inventions. The party that desires to obtain such NON-LICENSE FIELD PATENT RIGHTS shall be responsible for the preparation, filing, prosecution and maintenance of any patent applications and patents included in such NON-LICENSE FIELD PATENT RIGHTS (consistent with the agreement of the parties resulting from such discussions or dispute resolution), and for all Costs incurred therefor. 3.3 3.4 With respect to any ‘959 PATENT RIGHT (whether covered under Paragraph 3.1 or 3.2) that is or would be jointly owned by PALOMAR and GENERALFAMILY PATENT RIGHT, each document or a draft thereof pertaining to the filing, prosecution, or maintenance of such ‘959 PATENT FAMILY PATENT RIGHT, including but not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to the non-filing party GENERAL as follows. The filing party PALOMAR shall instruct its outside counsel to provide such documents simultaneously to the non-filing party GENERAL and such filing partyPALOMAR. If such counsel fails to deliver such documents simultaneously to such non-filing partyGENERAL, then such filing party PALOMAR shall promptly deliver a copy of such documents to such non-filing partyGENERAL. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to allow for review and comment by such non-filing partyGENERAL. Such filing party PALOMAR shall use its commercially reasonable efforts to notify such non-filing party GENERAL prior to engaging in any prosecution action with respect to any such ‘959 PATENT FAMILY PATENT RIGHT (for clarity, including without limitation the filing of any patent applications related by priority to any such ‘959 PATENT FAMILY PATENT RIGHT), and such non-filing party GENERAL shall have the right to provide comments and recommendations on such actionany action proposed to be taken by PALOMAR, and such filing party PALOMAR agrees to consider in good faith such non-filing partyGENERAL’s recommendations. In the case of ‘959 PATENT FAMILY PATENT RIGHTS containing VALID CLAIMS covering subject matter solelyoutside of the LICENSE FIELD, PALOMAR shall take no prosecution action without first using commercially reasonably efforts to obtain written approval from GENERAL, which approval shall not be unreasonably delayed, withheld or conditioned.

Filing Prosecution and Maintenance of Patent Rights. 3.1 PALOMAR 4.1 Notwithstanding anything to the contrary in this Agreement, [****] or [****] successor in interest to the [****] Agreement, has the sole and exclusive right to take any action that it considers appropriate in connection with the prosecution and maintenance of the `Nano Patents' (as that term is defined in the [****] Agreement) as provided in Section 4.5 of the [****] Agreement. It is understood that [****] can take actions that NYCOMED cannot control including abandonment of patents without the requirement to notify NYCOMED or GENERAL. 4.2 In accordance with the Invention and License Administration Agreement (Exhibit C), GENERAL shall continue to be responsible for the preparation, filing, prosecution and maintenance of all patent applications and patents included in GENERAL PATENT RIGHTS and JOINT PATENT RIGHTS and shall, after the EFFECTIVE DATE promptly and diligently pursue such activities in the United States and foreign jurisdictions mutually agreeable to the parties (such agreement not to be unreasonably withheld) ("Patent Activities"). GENERAL may select patent counsel and other advisors to assist in such Patent Activities, subject to COMPANY approving same (which approval shall not be unreasonably withheld). So long as COMPANY holds an exclusive license hereunder to the GENERAL PATENT RIGHTS and the JOINT PATENT RIGHTS, such patent counsel and for all costs incurred therefor (“Costs”). PALOMAR may elect not advisors shall be advised by GENERAL, to continue to prosecute or maintain any U.S. or foreign patent application or patent contained within the PATENT RIGHTS upon sixty (60) days advance written notice extent consistent with their obligations to GENERAL, to be promptly available to COMPANY and/or its counsel for information and PALOMAR shall thereafter be relieved of the obligation to pay any additional Costs advice regarding such U.S. or foreign patent application or patent Patent Activities. COMPANY shall reimburse GENERAL for all reasonable costs ("Costs") incurred after the expiration of such sixty (60) day notice period. After the expiration of such sixty (60) day notice period, such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and by GENERAL shall be free to file, prosecute and maintain and license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. 3.2 Notwithstanding Paragraph 3.1, in the event a party desires to obtain PATENT RIGHTS that would claim only inventions that are wholly outside of the LICENSE FIELD (“NON-LICENSE FIELD PATENT RIGHTS”), then such party shall notify the other party, which notice shall identify such inventions and the inventors thereof. During the thirty (30) day period following such other party’s receipt of such notice, the parties shall discuss in good faith the content of such inventions and the inventorship thereof, and if the parties disagree on and cannot resolve such issues within such 30-day period, either party shall have the right to have the dispute resolved in accordance with Paragraph 9.9 (with such 30-day period replacing the initial 60-day resolution period in Paragraph 9.9). During such 30-day period or dispute resolution, each party shall not seek any claims covering such inventions. The party that desires to obtain such NON-LICENSE FIELD PATENT RIGHTS shall be responsible for the preparation, filing, prosecution and maintenance of any patent applications and patents included in such NON-LICENSE FIELD all PATENT RIGHTS as follows: ---------------- [****] REPRESENTS MATERIAL WHICH HAS BEEN REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. (consistent with the agreement of the parties resulting from such discussions or dispute resolution)a) Subject to paragraph 4.3, and for all Costs incurred thereforby GENERAL from and after the EFFECTIVE DATE, COMPANY shall reimburse GENERAL within thirty (30) days of receipt of invoices from GENERAL; (b) For all Costs incurred by GENERAL prior to the EFFECTIVE DATE, not to exceed [****], COMPANY shall reimburse GENERAL upon execution of this Agreement. 3.3 4.3 NYCOMED shall provide to GENERAL and COMPANY all documentation pertaining to the filing and prosecution of JOINT PATENT RIGHTS within 30 days of the signing of this Agreement. 4.4 With respect to any GENERAL or JOINT PATENT RIGHT (whether covered under Paragraph 3.1 or 3.2) that is or would be jointly owned by PALOMAR and GENERALRIGHT, each document or a draft thereof thereof, including all related correspondence and memoranda pertaining to the filing, prosecution, or maintenance of such GENERAL or JOINT PATENT RIGHT, including but not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to the non-filing party COMPANY as follows. The filing party : Documents received from or delivered to any patent office and counsel's analysis thereof, if any, shall instruct its outside counsel to provide such documents simultaneously be provided promptly to the non-filing party and such filing party. If such counsel fails to deliver such documents simultaneously to such non-filing party, then such filing party shall promptly deliver a copy of such documents to such non-filing partyCOMPANY upon receipt or preparation by counsel. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to the parties hereto to allow for review and comment by such non-filing the other party. The parties hereto shall maintain all such documents in accordance with Article 10 hereof, and each party hereto shall take whatever other steps are necessary to preserve the attorney-client privilege of any such document, including limiting photocopies and internal disclosure. If as a result of the review of any such document, COMPANY shall elect not to pay or continue to pay the Costs for such GENERAL or JOINT PATENT RIGHT, COMPANY shall so notify GENERAL within thirty (30) days of COMPANY's receipt of such document and COMPANY shall thereafter be relieved of the obligation to pay any additional Costs regarding such GENERAL or JOINT PATENT RIGHT incurred after the receipt of such notice by GENERAL. Such filing party U.S. or foreign patent application or patent shall use its commercially reasonable efforts thereupon cease to notify such non-filing party prior be a GENERAL or JOINT PATENT RIGHT hereunder and GENERAL shall be free without further obligations to engaging in any prosecution action with respect COMPANY to license the rights to that particular U.S. patent application or patent to any ---------------- [****] REPRESENTS MATERIAL WHICH HAS BEEN REDACTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. other party on any terms; provided, however, that the foregoing shall not apply if COMPANY indicates that its election not to pay or continue to pay such Costs is based upon a good faith objection to the reasonableness of such Costs or the quality of services being performed, in which event the dispute shall be resolved as provided in paragraph 12.9 hereafter if such dispute cannot first be resolved in discussions with GENERAL's patent counsel. 4.5 COMPANY acknowledges that patent counsel selected by GENERAL as provided hereinabove shall have a fiduciary duty to GENERAL; however, so long as COMPANY is an exclusive licensee hereunder of the GENERAL and JOINT PATENT RIGHT (for clarityRIGHTS and so long as COMPANY is obligated to pay the costs and fees of such counsel, including without limitation such counsel shall to the filing of any extent consistent with his obligations to GENERAL, be available to discuss patent applications related matters with the COMPANY's counsel. 4.6 In the event that GENERAL shall fail or refuse to diligently pursue its responsibilities in GENERAL's name described in paragraph 4.2, then COMPANY shall, upon 60 days notice with a right to cure by priority to any such PATENT RIGHT)GENERAL during said notice period, and such non-filing party shall have the right at its expense but in GENERAL's and NYCOMED's name to provide comments take over such responsibilities and recommendations on to select patent counsel and advisors to assist it in such actionmatters. In such event, and such filing party agrees to consider in good faith such non-filing party’s recommendationsCOMPANY shall be bound by the other provisions of this Article 4.

Filing Prosecution and Maintenance of Patent Rights. 3.1 PALOMAR 4.1 GENERAL shall continue to be responsible for the preparation, filing, prosecution and maintenance of all patent applications and patents included in the PATENT RIGHTS, and . AGA shall reimburse GENERAL for all reasonable costs incurred therefor (“Costs”). PALOMAR may elect not to continue to prosecute or maintain any U.S. or foreign patent application or patent contained within the PATENT RIGHTS upon sixty (60) days advance written notice to GENERAL, and PALOMAR shall thereafter be relieved of the obligation to pay any additional Costs regarding such U.S. or foreign patent application or patent incurred after the expiration of such sixty (60) day notice period. After the expiration of such sixty (60) day notice period, such U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and by GENERAL shall be free to file, prosecute and maintain and license its rights to that particular U.S. or foreign patent application or patent to any other party on any terms. 3.2 Notwithstanding Paragraph 3.1, in the event a party desires to obtain PATENT RIGHTS that would claim only inventions that are wholly outside of the LICENSE FIELD (“NON-LICENSE FIELD PATENT RIGHTS”), then such party shall notify the other party, which notice shall identify such inventions and the inventors thereof. During the thirty (30) day period following such other party’s receipt of such notice, the parties shall discuss in good faith the content of such inventions and the inventorship thereof, and if the parties disagree on and cannot resolve such issues within such 30-day period, either party shall have the right to have the dispute resolved in accordance with Paragraph 9.9 (with such 30-day period replacing the initial 60-day resolution period in Paragraph 9.9). During such 30-day period or dispute resolution, each party shall not seek any claims covering such inventions. The party that desires to obtain such NON-LICENSE FIELD PATENT RIGHTS shall be responsible for the preparation, filing, prosecution and maintenance of any patent applications and patents included all PATENT RIGHTS in such NON-the LICENSE FIELD and the relevant LICENSE TERRITORY as follows: (a) OHMEDA has reimbursed GENERAL for Costs, as agreed, which were billed to OHMEDA prior to May l, 1997, with respect to the PATENT RIGHTS licensed to OHMEDA under the Prior Agreement. (consistent b) Upon execution of this Amended Agreement and receipt of invoices from GENERAL, AGA shall reimburse GENERAL for all past Costs with respect to all other PATENT RIGHTS set forth in Appendix B. it being understood that such Costs shall be approximately in the agreement amount of One Hundred Twenty-Four Thousand Seven Hundred Seven Dollars ($124,707.00) for services rendered through March 31, 1997 the costs between April 1,1977 and December 31,1998 is approximately Fifty Nine Thousand Eight Hundred Seventy Nine Dollars ($59,879.00). (c) AGA shall continue to reimburse GENERAL for Costs with respect to all PATENT RIGHTS, subject to Article 4.2 and 4.3 below upon receipt of invoices from GENERAL. (d) In the event GENERAL grants licenses to third parties under PATENT RIGHTS for uses not in the LICENSE FIELD, or GENERAL grants rights to third parties in the LICENSE FIELD as a result of the parties resulting from license granted to AGA herein becoming non-exclusive, GENERAL will, as of the effective date of such discussions or dispute resolutionlicenses to any third party, reduce the share of such Costs to be reimbursed by AGA with respect to such PATENT RIGHT by [**] percent ([**]%), and for all Costs incurred therefor. 3.3 4.2 With respect to any PRIMARY PATENT RIGHT (whether covered under Paragraph 3.1 or 3.2) that is or would be jointly owned by PALOMAR and GENERALRIGHT, each document or a draft thereof pertaining to the filing, prosecution, or maintenance of such PATENT RIGHT, including but not limited to each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent issuing from such application shall be provided to the non-filing party AGA as follows. The filing party Documents received from any patent office or counsel’s analysis thereof shall instruct its outside counsel to provide such documents simultaneously to the non-filing party and such filing party. If such counsel fails to deliver such documents simultaneously to such non-filing party, then such filing party shall be provided promptly deliver a copy of such documents to such non-filing partyafter receipt. For a document to be filed in any patent office, a draft of such document shall be provided sufficiently prior to its filing, to allow for review and comment by AGA If as a result of the review of any such non-filing partydocument, AGA shall elect not to pay or continue to pay the Costs for such PATENT RIGHT, AGA shall so notify GENERAL, in writing, within [**] days of AGA ‘s receipt of such document and AGA shall thereafter be relieved of the obligation to pay any additional Costs regarding such PATENT RIGHT incurred after the receipt of such notice by GENERAL. Such filing U.S. or foreign patent application or patent shall thereupon cease to be a PATENT RIGHT hereunder and GENERAL shall be free to license its rights to that particular patent application or patent to any other party on any terms. 4.3 AGA’s obligation to reimburse Costs shall use its commercially apply only to Costs generated in the LICENSE TERRITORY with respect to the particular PATENT RIGHT for which such reimbursement is sought. With respect to the SECONDARY PATENT RIGHTS, in the event that GENERAL incurs Costs in a country which are not reimbursed by GENERAL’S other licensee(s) in such country, the parties will negotiate a reasonable efforts share of such Costs to notify such non-filing party prior to engaging be reimbursed by AGA. Notwithstanding any other provision of this paragraph 4.3, it is understood that during any period in any prosecution action which AGA is the sole licensee of GENERAL in a country with respect to any PATENT RIGHTSAGA shall reimburse GENERAL in the full amount of the Costs of such PATENT RIGHT (for clarity, including without limitation the filing of any patent applications related by priority to any RIGHTS in such PATENT RIGHT), and such non-filing party shall have the right to provide comments and recommendations on such action, and such filing party agrees to consider in good faith such non-filing party’s recommendationscountry.