Common use of Maintenance of Patents Clause in Contracts

Maintenance of Patents. 3.2.1 Licensor or its assignee will have sole responsibility for (and will bear the cost of) preparing, filing, prosecuting, and maintaining any Licensed Patent Rights, in its sole discretion, with the exception that, subject to the provision(s) below, Licensor or its assignee will use commercially reasonable efforts to continue to maintain any of the Licensed Patent Rights that relate to Licensed Products. Licensor or its assignee will provide Licensee with a reasonable opportunity to review and comment on substantive filings with respect to the Licensed Patent Rights set forth on Exhibit D (the “Review and Comment Patent Rights”), and shall use reasonable efforts to keep Licensee reasonably informed in a timely manner of progress with regard to the preparation, filing, prosecution and maintenance of the Review and Comment Patent Rights. Licensor shall consider in good faith the requests and suggestions of Licensee with respect to strategies for filing and prosecuting Review and Comment Patent Rights. 3.2.2 If Licensor or its assignee elects to discontinue its financial support for the prosecution of a pending Licensed Patent Right or the maintenance of an issued Licensed Patent Right in one or more (or all) jurisdictions, that relate to Licensed Products, Licensor or its assignee will give prompt and timely notice (not less than 30 days) of that election (a “Discontinuation Notice”) to Licensee in sufficient time to permit the Licensee to assume the prosecution and maintenance of such patent applications or patents in such jurisdiction, and Licensee may, at its election, assume full financial responsibility for those costs and expenses in such jurisdictions. 3.2.3 If Licensee assumes full financial responsibility for those costs and expenses in those jurisdictions, Licensor or its assignee will promptly (not more than 10 days) assign its rights to the relevant Licensed Patent Right to Licensee in those jurisdictions (for the avoidance of doubt, on a jurisdiction-by-jurisdiction basis, only where Licensor or its assignee has elected to cease its support), including the right to Practice such Licensed Patent Rights in such jurisdiction; 3.2.4 If Licensee does not assume responsibility for the continued prosecution and/or maintenance within 30 days after the Discontinuation Notice, Licensor will have no further responsibility with respect to the prosecution or maintenance of the relevant Patent Rights. 3.2.5 The rights granted to Licensee under this Section 3.2 are subject to all applicable terms of the Retained Third Party License Agreements.

Maintenance of Patents. 3.2.1 Licensor or its assignee will have sole responsibility for (and will bear Except as stated in the cost of) preparing, filing, prosecuting, and maintaining any Licensed Patent Rights, in its sole discretion, with the exception that, subject proviso to the provision(s) belowfollowing sentence, Licensor neither Licensor, nor any of its Subsidiaries, is required to file any patent application, or its assignee will use commercially reasonable efforts to continue secure any patent or patent rights, or to maintain any Licensee Licensed Intellectual Property in force. Payment of maintenance fees and the taking of any other appropriate maintenance action for the Licensee Licensed Intellectual Property listed on Schedules 2.1.1 and 2.1.2 shall be at the sole discretion of, and is the financial responsibility of, Licensor; provided, however, that Licensor agrees that for twenty-four (24) months from the Closing Date, Licensor shall pay all of the maintenance fees and take any and all other appropriate maintenance action for the Licensee Licensed Intellectual Property in Schedule 2.1.1 and 2.1.2; provided further that in no event shall such fees include any fees payable in respect of recording this Agreement on behalf of Licensee, which fees shall be borne by Licensee. Following such twenty-four (24) month period, in the event that Licensor decides not to maintain any such Patents, Licensor will give Licensee written notice of such decision at least three (3) months prior to the date that appropriate maintenance action must be taken provided that such notice period of three (3) months shall not apply if Licensor receives any notice from the relevant Government Authority with regard to any application of any Patents and the period within which any appropriate maintenance action required to be taken in respect of such Patent Rights that relate application is less than three (3) months from the date such notice is issued, in which case, if Licensor decides not to Licensed Products. maintain such Patent application, Licensor or its assignee shall, within five (5) Business Days of receiving such notice, give written notice of such decision to Licensee, and Licensee will provide Licensee with a reasonable opportunity to review and comment on substantive filings have the option of taking the appropriate maintenance action with respect to such Patents and maintaining the Licensed Patent Rights set forth on Exhibit D (application or registration to such Patents for no additional consideration to Licensor in accordance with the “Review terms of this Agreement and Comment Patent Rights”), and shall use reasonable efforts to keep Licensee reasonably informed in a timely manner of progress with regard to the preparation, filing, prosecution and maintenance of the Review and Comment Patent Rights. Licensor shall consider forthwith execute any necessary documents or instruments for transferring and assigning all right, title and interest that Licensor has in good faith the requests and suggestions of Licensee with respect to strategies for filing and prosecuting Review and Comment Patent Rights. 3.2.2 If Licensor or its assignee elects to discontinue its financial support for the prosecution of a pending Licensed Patent Right or the maintenance of an issued Licensed Patent Right in one or more (or all) jurisdictions, that relate to Licensed Products, Licensor or its assignee will give prompt and timely notice (not less than 30 days) of that election (a “Discontinuation Notice”) such Patents to Licensee in sufficient time at Licensee’s cost and expense but for no additional consideration to permit the Licensee to assume the prosecution and maintenance of such patent applications or patents in such jurisdiction, and Licensee may, at its election, assume full financial responsibility for those costs and expenses in such jurisdictions. 3.2.3 If Licensee assumes full financial responsibility for those costs and expenses in those jurisdictions, Licensor or its assignee will promptly (not more than 10 days) assign its rights to the relevant Licensed Patent Right to Licensee in those jurisdictions (for the avoidance of doubt, on a jurisdiction-by-jurisdiction basis, only where Licensor or its assignee has elected to cease its support), including the right to Practice such Licensed Patent Rights in such jurisdiction; 3.2.4 Licensor. If Licensee does not assume responsibility take such maintenance action before the deadline for the continued prosecution and/or maintenance within 30 days after the Discontinuation Noticetaking such action, Licensor then such Licensee Licensed Intellectual Property will have no further responsibility with respect be permitted to the prosecution or maintenance of the relevant Patent Rightslapse. 3.2.5 The rights granted to Licensee under this Section 3.2 are subject to all applicable terms of the Retained Third Party License Agreements.