Common use of Filing, Prosecution and Maintenance Clause in Contracts

Filing, Prosecution and Maintenance. Altairnano shall have the sole and exclusive right to prepare, file, and prosecute all Licensed Patents throughout the world and shall be responsible for activities related to conducting any interferences, reexaminations, reissues, oppositions, or requests for patent term extension relating to such Licensed Patents. All costs related to the aforementioned activities shall be shared by Altairnano and ALSHER, wherein seventy-five percent (75%) of such costs shall be borne by ALSHER and twenty-five percent (25%) of such costs shall be borne by Altairnano. 3.5.1 ALSHER shall, at the reasonable request of Altairnano, sign or have signed any and all documents necessary in connection with Altairnano’s filing, prosecution, maintenance, extension and enforcement of the Licensed Patents and to take such other actions as Altairnano may reasonably request from ALSHER in connection with the Licensed Patents, the expense for which shall be allocated in accordance with Section 3.5. 3.5.2 Altairnano shall immediately upon the execution of this Agreement and the grant of any of the Licensed Patents grant and enter with ALSHER into a license agreement in the form or substantially the form set out in Exhibit C which license shall be registered by ALSHER with such Patent Offices in the Territory as it considers appropriate. Until the grant of any such license so far as may be legally possible Altairnano and ALSHER shall have the same rights in respect of the Patents and be under the same obligations to each other in all respects as if the said license had been granted. 3.5.3 Altairnano shall keep ALSHER apprised of any material and non-ministerial activities related to the Licensed Patents by providing ALSHER with copies of official actions, amendments, draft responses and responses with respect to Altairnano’s preparation, filing, prosecution and maintenance of the Licensed Patents, and Altairnano shall take into account ALSHER’s reasonable comments with respect to such activities. Other than considering ALSHER’s reasonable comments, Altairnano shall have sole discretion with respect to the preparation, filing, prosecution and maintenance of the Licensed Patents. 3.5.4 If Altairnano elects not to file, prosecute, maintain or extend any of the patents that are included within the Licensed Patents, then Altairnano shall promptly (and in any event not less than sixty (60) calendar days prior to the deadline for taking appropriate action with respect to such patent) notify ALSHER of the same and ALSHER shall then have the right, but not the obligation, to assume the responsibility for preparing, filing, prosecuting and maintaining such patents at ALSHER’s sole expense and using counsel of its choosing. If ALSHER elects to file and/or continue prosecution and/or maintenance of any such patent that Altairnano elects to discontinue, Altairnano shall execute such documents and perform such acts as may be reasonably necessary to permit ALSHER to file, prosecute and/or maintain such patent. Altairnano will provide ALSHER reasonable cooperation and will make available to ALSHER, at reasonable times and under appropriate conditions, access to relevant personnel, records, papers and the like in its possession necessary for ALSHER to file or prosecute such patent application and/or maintain such patent. If ALSHER elects to file and/or continue prosecution and/or maintenance of any such patent that Altairnano elects to discontinue, such patent shall remain a Licensed Patent for purposes of this Agreement. 3.5.5 If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances that it (or a third party on its behalf) is preparing, filing, prosecuting and maintaining the Licensed Patents, ALSHER shall have the right, upon notice in writing to Altairnano, to assume the responsibility for preparing, filing, prosecuting and maintaining the Licensed Patents at ALSHER’s sole expense and using counsel of its choosing. If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances that it (or a third party on its behalf) is adequately preserving and protecting the viability of the Licensed Intellectual Property, ALSHER shall have the right upon notice in writing to Altairnano to take all steps as it considers necessary in the circumstances to preserve and protect the viability of the Licensed Intellectual Property including without limitation to create and maintain current copies or, if not amenable to copying, descriptions or other appropriate embodiments, to the extent feasible, of all documents and records evidencing conception or reduction to practice of any invention claimed or disclosed in any Licensed Intellectual Property.

Filing, Prosecution and Maintenance. Altairnano 8.1 Quadrant shall have use reasonable efforts at Profibrix’s cost and expense to procure the sole and exclusive right to prepare, file, and prosecute all Licensed Patents throughout grant of the world and Fibrocaps Patent Applications. Quadrant shall be responsible take account of Profibrix’s views concerning the prosecution strategy for activities related to conducting any interferences, reexaminations, reissues, oppositions, or requests for patent term extension relating to such Licensed Patents. All costs related to the aforementioned activities shall be shared by Altairnano and ALSHER, wherein seventy-five percent (75%) of such costs shall be borne by ALSHER and twenty-five percent (25%) of such costs shall be borne by AltairnanoFibrocaps Patent Applications. 3.5.1 ALSHER 8.2 Quadrant shall, at Profibrix’s expense, use reasonable efforts to maintain the reasonable Fibrocaps Granted Patents. 8.3 At least 90 days before allowing any Fibrocaps Patent to lapse or abandoning any application for a Fibrocaps Patent, Quadrant shall notify Profibrix of the identity of the Fibrocaps Patent concerned and its intention to allow it to lapse or to abandon it. At the request of AltairnanoProfibrix, sign or have signed any and all documents necessary in connection with Altairnano’s filingQuadrant shall promptly assign to Profibrix, prosecution, maintenance, extension and enforcement free of the Licensed Patents and to take such other actions as Altairnano may reasonably request from ALSHER in connection with the Licensed Patentscharge, the expense for which shall be allocated in accordance with Section 3.5. 3.5.2 Altairnano shall immediately upon the execution of this Agreement Fibrocaps Patent concerned and the grant of any of the Licensed Patents grant and enter with ALSHER into a license agreement parties shall execute an assignment in the form or substantially the form set out in Exhibit C which license Schedule 3. 8.4 Subject to Clause 8.6, Profibrix shall be registered not assign, or agree to assign, grant an option to assign, or otherwise encumber all or any of the Fibrocaps Patents assigned to Profibrix under Clause 8.3 on or before the Anniversary Date. 8.5 Profibrix shall not assign or otherwise transfer all or any of the Fibrocaps Patent assigned to Profibrix under Clause 8.3 unless the proposed assignee has entered into a legally binding written agreement with Quadrant on terms reasonably required by ALSHER with such Patent Offices in the Territory as it considers appropriate. Until the grant of any such license so far as may be legally possible Altairnano and ALSHER shall have Quadrant to ensure (1) Quadrant continues to receive payments that are the same rights in respect as those that would have been payable under this Agreement; and (2) such assignment does not affect Quadrant’s ability to exercise any of the rights granted to Quadrant under this Agreement. 8.6 Profibrix shall not grant any right, licence, waiver or otherwise agree not to assert any or all of the Fibrocaps Patents and assigned to Profibrix under Clause 8.3 without the prior written approval by Quadrant of the terms of the relevant agreement. 8.7 For the avoidance of doubt, Quadrant shall not be under the same obligations any obligation to each other in all respects as if the said license had been granted. 3.5.3 Altairnano shall keep ALSHER apprised of any material and non-ministerial activities related to the Licensed Patents by providing ALSHER with copies of official actionsfile, amendmentsprosecute, draft responses and responses with respect to Altairnano’s preparationmaintain, filing, prosecution and maintenance of the Licensed Patents, and Altairnano shall take into account ALSHER’s reasonable comments with respect to such activities. Other than considering ALSHER’s reasonable comments, Altairnano shall have sole discretion with respect to the preparation, filing, prosecution and maintenance of defend and/ or enforce the Licensed Patents. 3.5.4 8.8 If Altairnano elects not to file, prosecute, maintain or extend Quadrant finds that any of the patents that Fibrocaps Patents are included within the Licensed Patents, then Altairnano shall promptly (and in any event not less than sixty (60) calendar days prior to the deadline for taking appropriate action with respect to such patent) notify ALSHER of the same and ALSHER shall then have the right, but not the obligation, to assume the responsibility for preparing, filing, prosecuting and maintaining such patents at ALSHER’s sole expense and using counsel of its choosing. If ALSHER elects to file and/or continue prosecution and/or maintenance of any such patent that Altairnano elects to discontinue, Altairnano shall execute such documents and perform such acts as may be reasonably necessary to permit ALSHER to file, prosecute and/or maintain such patent. Altairnano will provide ALSHER reasonable cooperation and will make available to ALSHER, at reasonable times and under appropriate conditions, access to relevant personnel, records, papers and the like in its possession necessary for ALSHER to file or prosecute such patent application and/or maintain such patent. If ALSHER elects to file and/or continue prosecution and/or maintenance of any such patent that Altairnano elects to discontinue, such patent shall remain a Licensed Patent for purposes of this Agreement. 3.5.5 If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances that it (or being infringed by a third party on its behalf) is preparing, filing, prosecuting and maintaining the Licensed Patents, ALSHER shall have the right, upon notice in writing to Altairnano, to assume the responsibility for preparing, filing, prosecuting and maintaining the Licensed Patents at ALSHER’s sole expense and using counsel then Quadrant will notify Profibrix of its choosingsuch infringement. If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances Profibrix informs Quadrant that it (does not intend to take action against the infringer or a third party on its behalf) is adequately preserving and protecting Profibrix fails to take action against the viability infringer within 90 days of the Licensed Intellectual Property, ALSHER date of Quadrant’s notice to Profibrix then Quadrant shall have the right upon notice in writing to Altairnano be entitled to take all steps as it considers necessary action against the infringer in the circumstances Profibrix’s name at Quadrant’s own cost and expense. Any award of damages or costs arising out of such action taken by Quadrant shall belong to preserve and protect the viability of the Licensed Intellectual Property including without limitation to create and maintain current copies or, if not amenable to copying, descriptions or other appropriate embodiments, to the extent feasible, of all documents and records evidencing conception or reduction to practice of any invention claimed or disclosed in any Licensed Intellectual PropertyQuadrant.

Filing, Prosecution and Maintenance. Altairnano Corixa shall have the sole and exclusive first right to prepare, file, prosecute and prosecute maintain all Corixa WT-1 Patents, Corixa Adjuvant Patents, Corixa [*] Patents and Joint Patents as provided in this Section 11.1(a) and shall do so in a timely manner, provided that in any jurisdiction where joint filing and/or prosecution is required regarding a Joint Patent, Kirin shall reasonably and promptly cooperate with Corixa regarding the filing and/or prosecution of such Joint Patent. Corixa shall promptly disclose in writing to Kirin (a) the complete texts of all patents and patent applications filed by Corixa (and any related filings) that relate to any Licensed Product (including Corixa WT-1 Patents throughout and all Joint Patents) prior to filing so that Kirin has a reasonable opportunity to comment and consult with Corixa on such filings, as well as (b) all information received concerning the world institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving any patent or patent application licensed herein. Kirin shall have the right to review all such applications, patents, filings and other proceedings and make recommendations to Corixa concerning them and their conduct. Corixa agrees to give due consideration to Kirin's recommendations and to keep Kirin promptly and fully informed of the course of patent prosecution, maintenance or other proceedings including by providing Kirin with copies of substantive communications, notices, actions, search reports and Third Party observations submitted to or received from patent offices. Corixa shall provide such patent consultation, filings and information to Kirin at no cost to Kirin. Kirin shall hold all information disclosed to it under this Section as Corixa's Confidential Information under Article 12, provided that such information relating to Joint Patents shall be the Confidential Information of both parties. Subject to Section 11.1(b), Kirin shall reimburse Corixa for all reasonable, direct, and documented out-of-pocket costs incurred by Corixa after the Effective Date in connection with the filing, prosecution and maintenance of Corixa WT-1 Patents and the Joint Patents with respect to Territory A, plus one-half of all reasonable, direct, and documented out-of-pocket costs incurred by Corixa after the Effective Date in connection with the filing, prosecution and maintenance of Corixa WT-1 Patents and the Joint Patents with respect to Territory B. Corixa shall be responsible for activities related to conducting any interferences, reexaminations, reissues, oppositions, or requests for patent term extension relating to such Licensed Patents. All all costs related to the aforementioned activities shall be shared incurred by Altairnano and ALSHER, wherein seventy-five percent (75%) of such costs shall be borne by ALSHER and twenty-five percent (25%) of such costs shall be borne by Altairnano. 3.5.1 ALSHER shall, at the reasonable request of Altairnano, sign or have signed any and all documents necessary in connection with Altairnano’s filing, prosecution, maintenance, extension and enforcement of the Licensed Patents and to take such other actions as Altairnano may reasonably request from ALSHER Corixa in connection with the Licensed Patents, the expense for which shall be allocated in accordance with Section 3.5. 3.5.2 Altairnano shall immediately upon the execution of this Agreement and the grant of any of the Licensed Patents grant and enter with ALSHER into a license agreement in the form or substantially the form set out in Exhibit C which license shall be registered by ALSHER with such Patent Offices in the Territory as it considers appropriate. Until the grant of any such license so far as may be legally possible Altairnano and ALSHER shall have the same rights in respect of the Patents and be under the same obligations to each other in all respects as if the said license had been granted. 3.5.3 Altairnano shall keep ALSHER apprised of any material and non-ministerial activities related to the Licensed Patents by providing ALSHER with copies of official actions, amendments, draft responses and responses with respect to Altairnano’s preparation, filing, prosecution and maintenance of the Licensed Patents, and Altairnano shall take into account ALSHER’s reasonable comments with respect to such activities. Other than considering ALSHER’s reasonable comments, Altairnano shall have sole discretion with respect to the preparation, filing, prosecution and maintenance of the Licensed Patents. 3.5.4 If Altairnano elects not to file, prosecute, maintain or extend any of the patents that are included within the Licensed Patents, then Altairnano shall promptly (and in any event not less than sixty (60) calendar days prior to the deadline for taking appropriate action with respect to such patent) notify ALSHER of the same and ALSHER shall then have the right, but not the obligation, to assume the responsibility for preparing, filing, prosecuting and maintaining such patents at ALSHER’s sole expense and using counsel of its choosing. If ALSHER elects to file and/or continue prosecution and/or maintenance of any such patent that Altairnano elects to discontinue, Altairnano shall execute such documents and perform such acts as may be reasonably necessary to permit ALSHER to file, prosecute and/or maintain such patent. Altairnano will provide ALSHER reasonable cooperation and will make available to ALSHER, at reasonable times and under appropriate conditions, access to relevant personnel, records, papers Corixa Adjuvant Patents and the like Corixa [*] Patents. Kirin shall designate the countries in its possession necessary for ALSHER Territory A in which Kirin wants Corixa to file make national filings of Corixa WT-1 Patents or prosecute such patent application and/or maintain such patent. If ALSHER elects to file and/or continue prosecution and/or maintenance of any such patent that Altairnano elects to discontinue, such patent shall remain a Licensed Patent for purposes of this Agreement. 3.5.5 If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances that it (or a third party Joint Patents based on its behalf) is preparing, filing, prosecuting and maintaining the Licensed Patents, ALSHER shall have the right, upon notice in writing to Altairnano, to assume the responsibility for preparing, filing, prosecuting and maintaining the Licensed Patents at ALSHER’s sole expense and using counsel of its choosing. If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances that it (or a third party on its behalf) is adequately preserving and protecting the viability of the Licensed Intellectual Property, ALSHER shall have the right upon notice in writing to Altairnano to take all steps as it considers necessary in the circumstances to preserve and protect the viability of the Licensed Intellectual Property including without limitation to create and maintain current copies or, if not amenable to copying, descriptions or other appropriate embodimentsCorixa's PCT filings, to the extent feasiblesuch PCT filings exist as of the Effective Date, of all documents and records evidencing conception Corixa shall make filings in such countries, and shall ---------- * Confidential Treatment Requested. duly prosecute and maintain such filings, in a timely manner, and Corixa may file Corixa WT-1 Patents or reduction to practice of any invention claimed or disclosed Joint Patents in any Licensed Intellectual Propertyother countries in Territory A at its discretion.

Filing, Prosecution and Maintenance. Altairnano shall have the sole and exclusive right to prepare, file, and prosecute all Licensed Patents throughout the world and of OncoMed Initial Prosecution Patents. OncoMed shall be responsible responsible, using patent counsel selected by OncoMed and reasonably acceptable to BSP (for activities related clarity, all references in this Article 8 to conducting “patent counsel” shall include inside patent counsel as well as outside patent counsel), for the preparation, prosecution (including without limitation any interferences, reexaminations, reissues, oppositions, or requests for patent term extension relating to such Licensed Patents. All costs related to the aforementioned activities shall be shared by Altairnano reissue proceedings and ALSHER, wherein seventy-five percent (75%reexaminations) of such costs shall be borne by ALSHER and twenty-five percent (25%) of such costs shall be borne by Altairnano. 3.5.1 ALSHER shall, at the reasonable request of Altairnano, sign or have signed any and all documents necessary in connection with Altairnano’s filing, prosecution, maintenance, extension and enforcement of the Licensed Patents and to take such other actions as Altairnano may reasonably request from ALSHER in connection with the Licensed Patents, the expense for which shall be allocated in accordance with Section 3.5. 3.5.2 Altairnano shall immediately upon the execution of this Agreement and the grant of any of the Licensed Patents grant and enter with ALSHER into a license agreement in the form or substantially the form set out in Exhibit C which license shall be registered by ALSHER with such Patent Offices in the Territory as it considers appropriate. Until the grant of any such license so far as may be legally possible Altairnano and ALSHER shall have the same rights in respect of the Patents and be under the same obligations to each other in all respects as if the said license had been granted. 3.5.3 Altairnano shall keep ALSHER apprised of any material and non-ministerial activities related to the Licensed Patents by providing ALSHER with copies of official actions, amendments, draft responses and responses with respect to Altairnano’s preparation, filing, prosecution and maintenance of the Licensed OncoMed Patents, [***] (“OncoMed Initial Prosecution Patents”). OncoMed shall reasonably inform and Altairnano consult with BSP, and shall take BSP’s comments into account ALSHER’s reasonable comments with respect to such activities. Other than considering ALSHER’s reasonable commentsgood faith consideration, Altairnano shall have sole discretion with respect to the preparation, filing, prosecution and maintenance of such OncoMed Initial Prosecution Patents; provided, however, that OncoMed shall endeavor to pursue patents claiming a Late BSP Development Compound in at least every country listed in Exhibit 8.2.1, unless otherwise agreed by the Licensed Patents. 3.5.4 If Altairnano elects not Parties. OncoMed shall provide to file, prosecute, maintain or extend BSP copies of any of the patents that are included within the Licensed Patents, then Altairnano shall promptly (and in any event not less than sixty (60) calendar days prior papers relating to the deadline for taking appropriate action filing, prosecution or maintenance of such OncoMed Initial Prosecution Patents reasonably in advance of their being filed or promptly upon their being received, including without limitation draft filings reasonably in advance of their being filed so that BSP can comment and provide input with respect to such patent) notify ALSHER of the same and ALSHER shall then have the rightdraft filings. OncoMed agrees to discuss in good faith any changes reasonably requested by BSP to such papers, but not the obligationincluding without limitation draft filings, promptly upon their being received. OncoMed agrees to assume the responsibility for preparing, filing, prosecuting and maintaining such patents at ALSHER’s sole expense and using counsel of its choosing. If ALSHER elects to file and/or continue prosecution and/or maintenance of implement any such recommended changes with the goal of optimizing overall patent protection for Late BSP Development Compounds, unless those changes would, in OncoMed’s reasonable belief, be detrimental to the issuance and validity of other OncoMed Initial Prosecution Patents or Patents then being prosecuted by OncoMed. In any event, OncoMed will [***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. not finally abandon any claims or will not limit any claims specific to Late BSP Development Compounds without BSP’s prior written consent. BSP hereby agrees that Altairnano elects the law firms Sterne, Kessler, Xxxxxxxxx & Xxx and Xxxxxxx Xxxxx are acceptable to discontinue, Altairnano shall execute such documents and perform such acts as may be reasonably necessary to permit ALSHER to file, prosecute and/or maintain such patent. Altairnano will provide ALSHER reasonable cooperation and will make available to ALSHER, at reasonable times and under appropriate conditions, access to relevant personnel, records, papers and the like in its possession necessary for ALSHER to file or prosecute such patent application and/or maintain such patent. If ALSHER elects to file and/or continue prosecution and/or maintenance of any such patent that Altairnano elects to discontinue, such patent shall remain a Licensed Patent BSP for purposes of this AgreementSection 8.2.1. 3.5.5 If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances that it (or a third party on its behalf) is preparing, filing, prosecuting and maintaining the Licensed Patents, ALSHER shall have the right, upon notice in writing to Altairnano, to assume the responsibility for preparing, filing, prosecuting and maintaining the Licensed Patents at ALSHER’s sole expense and using counsel of its choosing. If an Event of Bankruptcy occurs relating to Altairnano, and Altairnano has failed, within thirty (30) days following the Event of Bankruptcy, to give ALSHER reasonably adequate assurances that it (or a third party on its behalf) is adequately preserving and protecting the viability of the Licensed Intellectual Property, ALSHER shall have the right upon notice in writing to Altairnano to take all steps as it considers necessary in the circumstances to preserve and protect the viability of the Licensed Intellectual Property including without limitation to create and maintain current copies or, if not amenable to copying, descriptions or other appropriate embodiments, to the extent feasible, of all documents and records evidencing conception or reduction to practice of any invention claimed or disclosed in any Licensed Intellectual Property.