Common use of Patent Costs Clause in Contracts

Patent Costs. (a) During the term of this AGREEMENT, payment of all DUKE PATENT RIGHTS EXPENSES shall be the responsibility of OREXIGEN, whether such fees and costs were incurred before or after the EFFECTIVE DATE of this AGREEMENT. Notwithstanding anything to the contrary in this AGREEMENT, except as OREXIGEN declines interest in non-US patent pursuit, OREXIGEN shall be responsible for all DUKE PATENT RIGHTS EXPENSES associated with the preparation and filing of the PCT application(s) contained within the DUKE PATENT RIGHTS as well as all DUKE PATENT RIGHTS EXPENSES associated with pursuit and maintenance of the DUKE PATENT RIGHTS. Within [***] ([***]) days of the EFFECTIVE DATE of this AGREEMENT, OREXIGEN agrees to reimburse DUKE in the amount of nineteen thousand, eight hundred seventeen dollars and seventy-five cents (US$19,817.75) for DUKE PATENT RIGHTS EXPENSES which were incurred by DUKE, and for which attorney invoices were received and processed by DUKE, before the EFFECTIVE DATE. As regards all other DUKE PATENT RIGHTS EXPENSES, OREXIGEN agrees to pay such DUKE PATENT RIGHTS EXPENSES within [***] ([***]) days of receipt of an invoice for the same, and failure to pay such each such invoice within such thirty-day period shall be a default hereunder for which DUKE may terminate this AGREEMENT in accordance with Section 10.05. Notwithstanding the foregoing or anything else to the contrary in the AGREEMENT, if at any time OREXIGEN fails to reimburse DUKE for any DUKE PATENT RIGHTS EXPENSES within the thirty-day period following receipt of a subject invoice from DUKE, then henceforth during the term of this AGREEMENT, DUKE may, at its sole discretion, require OREXIGEN to make payment for estimated associated DUKE PATENT RIGHTS EXPENSES prior to incurring such DUKE PATENT RIGHTS EXPENSES, including, but without limitation, DUKE PATENT RIGHTS EXPENSES associated with national phase filings of DUKE PATENT APPLICATIONS, preparation and filing of responses to patent office actions on DUKE PATENT APPLICATIONS, etc., such requirement by DUKE not to preclude DUKE from exercising any other recourse it may have under this AGREEMENT as regards lack of prompt reimbursement of DUIKE PATENT RIGHTS EXPENSES by OREXIGEN. (b) If OREXIGEN decides to discontinue the financial support of the prosecution or maintenance of a subject DUKE PATENT APPLICATION or patent falling within the scope of DUKE PATENT RIGHTS, OREXIGEN will give DUKE timely written notice at least [***] ([***]) months in advance of the effective date of OREXIGEN’s decision and DUKE will be free to continue prosecution or maintain any such application(s)/patents, and to maintain any protection issuing thereon in the U.S. and in any foreign country at DUKE’s sole expense. In such instances, from the date of DUKE’s receipt of such written notice from OREXIGEN, such patent and/or DUKE PATENT APPLICATION shall no longer be considered to fall within the definition of DUKE PATENT RIGHTS (APPENDIX A shall be deemed to be so amended) and OREXIGEN shall forfeit all rights under this AGREEMENT to the subject issued patent(s) and/or subject DUKE PATENT APPLICATION and patent(s) arising from such PATENT APPLICATION. Accordingly, DUKE shall be free, at its sole discretion to license said patent(s) and patent application(s) to any THIRD PARTY or otherwise dispose of such patent(s) and patent applications(s) as it deems appropriate.

Patent Costs. (a) During the term of this AGREEMENT, payment of all DUKE PATENT RIGHTS EXPENSES relating to the filing, prosecution, and maintenance of the DUKE PATENT RIGHTS shall be the responsibility of OREXIGENCOMPANY, whether such fees and costs DUKE PATENT RIGHTS EXPENSES were incurred before or after the EFFECTIVE DATE of this AGREEMENT. Notwithstanding For avoidance of doubt and notwithstanding anything to the contrary in this AGREEMENT, it is understood and agreed that except as OREXIGEN in cases in which COMPANY declines interest in non-US U.S. patent pursuitpursuit for subject DUKE PATENT APPLICATIONS, OREXIGEN COMPANY shall be responsible for all DUKE PATENT RIGHTS EXPENSES associated with the preparation and filing of the PCT application(s) contained within the DUKE PATENT RIGHTS as well as all DUKE PATENT RIGHTS EXPENSES associated with pursuit filing, prosecution, and maintenance of the DUKE PATENT RIGHTS. Within [***] ([***]) days of the EFFECTIVE DATE of this AGREEMENT, OREXIGEN agrees to reimburse DUKE in the amount of nineteen thousand, eight hundred seventeen dollars and seventy-five cents (US$19,817.75) for DUKE PATENT RIGHTS EXPENSES which were incurred by DUKE, and for which attorney invoices were received and processed by DUKE, before the EFFECTIVE DATE. As regards COMPANY shall pay all other DUKE PATENT RIGHTS EXPENSES, OREXIGEN agrees to pay such DUKE PATENT RIGHTS EXPENSES within [***] thirty ([***]30) days of receipt of an invoice for the same, and failure to pay such each such invoice within such thirty-thirty (30) day period shall be a default hereunder for which DUKE may terminate this AGREEMENT in accordance with Section 10.05. Notwithstanding the foregoing or anything else In addition to the contrary in foregoing, within thirty (30) days of the EFFECTIVE DATE, COMPANY shall pay to DUKE the amount of [*] as reimbursement for DUKE PATENT RIGHTS EXPENSES that were incurred by DUKE and for which invoices had been received and processed by DUKE prior to the EFFECTIVE DATE, but for which COMPANY has riot previously made payment to DUKE under the OPTION AGREEMENT. (DUKE acknowledges and agrees that COMPANY has previously paid to DUKE, pursuant to the OPTION AGREEMENT, if an amount in excess of ninety-one thousand dollars (USS 91,000) as reimbursement for DUKE PATENT RIGHTS EXPENSES). If at any time OREXIGEN COMPANY fails to reimburse DUKE for any DUKE PATENT RIGHTS EXPENSES within the thirty-thirty (30) day period following receipt of a subject invoice from DUKEinvoice, then henceforth during the term of this AGREEMENT, DUKE may, at its sole discretion, require OREXIGEN COMPANY to make payment for estimated associated DUKE PATENT RIGHTS EXPENSES prior (which estimates shall reasonably be made in good faith by the patent counsel prosecuting the DUKE PATENT RIGHTS) pfj9r to incurring such DUKE PATENT RIGHTS EXPENSES, including, but without limitation, DUKE PATENT RIGHTS EXPENSES associated with national phase filings of DUKE PATENT APPLICATIONS, preparation and filing of responses to patent office actions on DUKE PATENT APPLICATIONS, etc., such requirement by DUKE not to preclude DUKE from exercising any other recourse it may have under this AGREEMENT as regards lack of prompt reimbursement of DUIKE DUKE PATENT RIGHTS EXPENSES by OREXIGENCOMPANY. (b) If OREXIGEN COMPANY decides to discontinue the financial support of the prosecution or maintenance of a subject DUKE PATENT APPLICATION or patent falling within the scope of DUKE PATENT RIGHTSPATENT, OREXIGEN COMPANY will give DUKE timely written notice at least [***] thirty ([***]30) months days in advance of the effective date of OREXIGENCOMPANY’s decision and DUKE DTJKE will be free to continue prosecution or maintain maintenance of any such application(s)/patents, DUKE PATENT APPLICATION) or DUKE PATENTS (as the case may be) and to maintain any protection issuing thereon in the U.S. and in any foreign country at DUKE’s sole expense. In such instances, from the effective date of DUKE’s receipt of specified in such written notice from OREXIGENCOMPANY, such patent DUKE PATENT(S) and/or DUKE PATENT APPLICATION APPLICATION(S) shall no longer be considered to fall within the definition of DUKE PATENT RIGHTS (APPENDIX A and as of such date COMPANY shall be deemed to be so amended) and OREXIGEN shall forfeit have forfeited all rights under this AGREEMENT to the subject issued patent(sDUKE PATENT(s) and/or subject DUKE PATENT APPLICATION APPLICATIONS and patent(sDUKE PATENT(s) arising from such DUKE PATENT APPLICATIONAPPLICATIONS. Accordingly, DUKE shall be free, at its sole discretion free to license said patent(ssuch DUKE PATENT(S) and patent application(sDUKE PATENT APPLICATION(S) to any THIRD PARTY PARTIES or otherwise dispose of such patent(sDUKE PATENT(S) and patent applications(sDUKE PATENT APPLICATION(S) as it deems appropriate.

Patent Costs. (a) During the term of this AGREEMENT, payment of all DUKE PATENT RIGHTS EXPENSES relating to the filing, prosecution, and maintenance of the DUKE PATENT RIGHTS shall be the responsibility of OREXIGENCOMPANY, whether such fees and costs DUKE PATENT RIGHTS EXPENSES were incurred before or after the EFFECTIVE DATE of this AGREEMENT. Notwithstanding anything to the contrary in this AGREEMENT, except as OREXIGEN in cases in which COMPANY declines interest in non-US U.S. patent pursuit, OREXIGEN COMPANY shall be responsible for all DUKE PATENT RIGHTS EXPENSES associated with the preparation and filing of the PCT application(s) contained within the DUKE PATENT RIGHTS as well as all DUKE PATENT RIGHTS EXPENSES associated with pursuit and maintenance of the DUKE PATENT RIGHTS. Within [***] ([***]) days of the EFFECTIVE DATE of this AGREEMENT, OREXIGEN agrees to reimburse DUKE in the amount of nineteen thousand, eight hundred seventeen dollars and seventy-five cents (US$19,817.75) for DUKE PATENT RIGHTS EXPENSES which were incurred by DUKE, and for which attorney invoices were received and processed by DUKE, before the EFFECTIVE DATE. As regards COMPANY will pay all other DUKE PATENT RIGHTS EXPENSES, OREXIGEN agrees to pay such DUKE PATENT RIGHTS EXPENSES within [***] ([***]) days [***] of receipt of an invoice for the same, and failure to pay such each such invoice within such thirty-day [***] ([***]) [***] period shall be a default hereunder for which DUKE may terminate this AGREEMENT in accordance with Section 10.0510.04. Notwithstanding the foregoing or anything else In addition to the contrary in foregoing, within [***] ([***]) [***] of the EFFECTIVE DATE of this AGREEMENT, if COMPANY shall pay to DUKE the amount of [***] (U.S.$ [***]) as reimbursement for DUKE PATENT RIGHTS EXPENSES that were incurred by DUKE and for which the invoices had been received and processed by DUKE before the EFFECTIVE DATE. If at any time OREXIGEN COMPANY fails to reimburse DUKE for any DUKE PATENT RIGHTS EXPENSES within the thirty-day [***] ([***]) [***] period following receipt of a subject invoice from DUKEinvoice, then henceforth during the term of this AGREEMENT, DUKE may, at its sole discretion, require OREXIGEN COMPANY to make payment for estimated associated DUKE PATENT RIGHTS EXPENSES (which estimates shall reasonably be made in good faith by the patent counsel prosecuting the DUKE PATENT RIGHTS) prior to incurring such DUKE PATENT RIGHTS EXPENSES, including, but without limitation, DUKE PATENT RIGHTS EXPENSES associated with national phase filings of DUKE PATENT APPLICATIONS, preparation and filing of responses to patent office actions on DUKE PATENT APPLICATIONS, etc., such requirement by DUKE not to preclude DUKE from exercising any other recourse it may have under this AGREEMENT as regards lack of prompt reimbursement of DUIKE DUKE PATENT RIGHTS EXPENSES by OREXIGENCOMPANY. (b) If OREXIGEN COMPANY decides to discontinue the financial support of the prosecution or maintenance of a subject DUKE PATENT APPLICATION or patent falling within the scope of DUKE PATENT RIGHTS, OREXIGEN COMPANY will give DUKE timely written notice at least [***] ([***]) months [***] in advance of the effective date of OREXIGENCOMPANY’s decision and DUKE will be free to continue prosecution or maintain maintenance of any such application(s)/patentsDUKE PATENT APPLICATION(S) or DUKE PATENT(S) as the case may be, and to maintain any protection issuing thereon in the U.S. and in any foreign country at DUKE’s sole expense. In such instances, from the effective date of DUKE’s receipt of specified in such written notice from OREXIGENCOMPANY, such patent DUKE PATENT(S) and/or DUKE PATENT APPLICATION APPLICATION(S) shall no longer be considered to fall within the definition of DUKE PATENT RIGHTS (APPENDIX A shall be deemed to be so amended) and OREXIGEN COMPANY shall forfeit all rights under this AGREEMENT to the subject issued patent(sDUKE PATENT(s) and/or subject DUKE PATENT APPLICATION APPLICATIONS and patent(sDUKE PATENT(s) arising from such DUKE PATENT APPLICATIONAPPLICATIONS. Accordingly, DUKE shall be free, at its sole discretion free to license said patent(ssuch DUKE PATENT(s) and patent application(s) DUKE PATENT APPLICATIONS to any THIRD PARTY PARTIES or otherwise dispose of such patent(sDUKE PATENT(s) and patent applications(sDUKE PATENT APPLICATION(S) as it deems appropriate.

Patent Costs. (a) During All Patent Costs incurred after the term of this AGREEMENT, payment of all DUKE PATENT RIGHTS EXPENSES Effective Date shall be the responsibility of OREXIGEN, whether such fees and costs were incurred before or after the EFFECTIVE DATE of this AGREEMENT. Notwithstanding anything to the contrary in this AGREEMENT, except as OREXIGEN declines interest in non-US patent pursuit, OREXIGEN shall be responsible for all DUKE PATENT RIGHTS EXPENSES associated with the preparation and filing of the PCT application(s) contained paid by Licensee within the DUKE PATENT RIGHTS as well as all DUKE PATENT RIGHTS EXPENSES associated with pursuit and maintenance of the DUKE PATENT RIGHTS. Within […***…] (days after receipt of Salk’s invoice therefor providing a reasonably detailed description of the Patent Costs. Additionally, Licensee shall be liable to Salk for all of Salk’s Patent Costs associated with actions that will be taken by patent counsel after the Term of this Agreement but in response to any instructions that were sent during the Term of this Agreement from Salk to patent counsel relating to the Licensed Patent Rights, to the extent such instructions were requested by Licensee in response to a specific office action or notice from a patent office and are fully implemented within […***]) …] days after the end of the EFFECTIVE DATE of this AGREEMENT, OREXIGEN agrees to reimburse DUKE in Term (the amount of nineteen thousand, eight hundred seventeen dollars and seventy“Post-five cents (US$19,817.75) for DUKE PATENT RIGHTS EXPENSES which were incurred by DUKE, and for which attorney invoices were received and processed by DUKE, before the EFFECTIVE DATE. As regards all other DUKE PATENT RIGHTS EXPENSES, OREXIGEN agrees to pay such DUKE PATENT RIGHTS EXPENSES within [***] ([***]) days of receipt of an invoice for the same, and failure to pay such each such invoice within such thirty-day period shall be a default hereunder for which DUKE may terminate this AGREEMENT in accordance with Section 10.05. Notwithstanding the foregoing or anything else to the contrary in the AGREEMENT, if at any time OREXIGEN fails to reimburse DUKE for any DUKE PATENT RIGHTS EXPENSES within the thirty-day period following receipt of a subject invoice from DUKE, then henceforth during the term of this AGREEMENT, DUKE may, at its sole discretion, require OREXIGEN to make payment for estimated associated DUKE PATENT RIGHTS EXPENSES prior to incurring such DUKE PATENT RIGHTS EXPENSES, including, but without limitation, DUKE PATENT RIGHTS EXPENSES associated with national phase filings of DUKE PATENT APPLICATIONS, preparation and filing of responses to patent office actions on DUKE PATENT APPLICATIONS, etc., such requirement by DUKE not to preclude DUKE from exercising any other recourse it may have under this AGREEMENT as regards lack of prompt reimbursement of DUIKE PATENT RIGHTS EXPENSES by OREXIGENTerm Patent Costs”). (b) If OREXIGEN decides Within […***…] days after receiving an invoice from Salk, Licensee will reimburse Salk for all Patent Costs related to discontinue the financial support Licensed Patent Rights. Payments pursuant to this Section 8.2 are not creditable against any other amounts due under this agreement. Pursuant to Section 9.5, late payments shall be subject to an additional charge. The payment of such late charges shall not prevent Salk from exercising any other rights it may have as a consequence of the prosecution lateness of any payment. Failure to pay within […***…] days will be considered a material breach of this Agreement. (c) Licensee may elect to surrender any Licensed Patent Rights in any country by providing to Salk written notice of such intent at least […***…] days prior to such surrender. Such notice shall be provided as set forth in Section 13. Such notice shall not relieve Licensee from responsibility to reimburse Salk for Patent Costs incurred prior to the expiration of the […***…] day notice period (or maintenance of such longer period specified in Licensee’s notice). In the event Licensee elects to surrender any Licensed Patent Rights in a subject DUKE PATENT APPLICATION country, such patent application or patent falling within shall, following such surrender, be excluded from the definition of the Licensed Patent Rights and from the scope of DUKE PATENT RIGHTS, OREXIGEN will give DUKE timely written notice at least [***] ([***]) months in advance of the effective date of OREXIGEN’s decision and DUKE will be free to continue prosecution or maintain any such application(s)/patentslicense granted under this Agreement, and to maintain any protection issuing thereon in the U.S. and in any foreign country at DUKE’s sole expense. In such instances, from the date of DUKE’s receipt of such written notice from OREXIGEN, such patent and/or DUKE PATENT APPLICATION shall no longer be considered to fall within the definition of DUKE PATENT RIGHTS (APPENDIX A shall be deemed to be so amended) and OREXIGEN shall forfeit all rights under this AGREEMENT relating thereto shall revert to the subject issued patent(s) and/or subject DUKE PATENT APPLICATION Salk and patent(s) arising from such PATENT APPLICATION. Accordingly, DUKE shall may be free, at its sole discretion to license said patent(s) and patent application(s) to any THIRD PARTY or otherwise dispose of such patent(s) and patent applications(s) as it deems appropriatefreely licensed by Salk.

Patent Costs. (a) During the term of this AGREEMENT, payment of all DUKE PATENT EXPENSES relating to the filing, prosecution, and maintenance of the PATENT RIGHTS EXPENSES shall be the responsibility of OREXIGENCOMPANY, whether such fees and costs PATENT EXPENSES were incurred before or after the EFFECTIVE DATE of this AGREEMENT. Notwithstanding anything DATE. (a) COMPANY shall reimburse DUKE for all PATENT EXPENSES incurred prior to the contrary in this AGREEMENT, except as OREXIGEN declines interest in non-US patent pursuit, OREXIGEN shall be responsible for all DUKE PATENT RIGHTS EXPENSES associated with the preparation and filing of the PCT application(sEFFECTIVE DATE within (i) contained within the DUKE PATENT RIGHTS as well as all DUKE PATENT RIGHTS EXPENSES associated with pursuit and maintenance of the DUKE PATENT RIGHTS. Within [***] of the EFFECTIVE DATE or (ii) [***]) days ] of COMPANY’s receipt of the EFFECTIVE DATE invoice(s) for the same from DUKE, whichever period of time is greater, and failure to pay such PATENT EXPENSES within such period of time shall be a default hereunder for which DUKE may seek to terminate this AGREEMENT in accordance with Section 10.04. (b) COMPANY shall also reimburse DUKE for any ongoing PATENT EXPENSES DUKE incurs during the term of this AGREEMENT, OREXIGEN agrees to reimburse . DUKE in the amount of nineteen thousand, eight hundred seventeen dollars and seventy-five cents (US$19,817.75) will periodically invoice COMPANY for DUKE such PATENT RIGHTS EXPENSES which were incurred by DUKEEXPENSES, and for which attorney invoices were received and processed by DUKE, before the EFFECTIVE DATE. As regards all other DUKE PATENT RIGHTS EXPENSES, OREXIGEN agrees to COMPANY shall pay each such DUKE PATENT RIGHTS EXPENSES invoice within [***] ([***]) days of receipt of an invoice for the same, and failure to pay such each such invoice within such thirty-day [***] period shall be a default hereunder for which DUKE may seek to terminate this AGREEMENT in accordance with Section 10.0510.04. Notwithstanding the foregoing or anything else to the contrary in the AGREEMENTIn addition, if at any time OREXIGEN COMPANY fails to reimburse DUKE for any DUKE PATENT RIGHTS EXPENSES within the thirty-day [***] period following receipt of a subject invoice from DUKEinvoice, then henceforth during the term of this AGREEMENT, DUKE may, at its sole discretion, require OREXIGEN COMPANY to make payment to DUKE for estimated associated DUKE PATENT RIGHTS EXPENSES (which estimates shall reasonably be made in good faith by the patent counsel prosecuting the PATENT RIGHTS) prior to DUKE’s incurring such DUKE PATENT RIGHTS EXPENSES, including, but without limitation, DUKE EXPENSES including PATENT RIGHTS EXPENSES associated with national phase filings of DUKE PATENT APPLICATIONS, APPLICATIONS and preparation and filing of responses to patent office actions on DUKE PATENT APPLICATIONS, etc.RIGHTS, such requirement by DUKE not to preclude DUKE from exercising any other recourse it may have under this AGREEMENT as regards lack of prompt reimbursement of DUIKE PATENT RIGHTS EXPENSES by OREXIGENCOMPANY. (b) If OREXIGEN decides to discontinue the financial support of the prosecution or maintenance of a subject DUKE PATENT APPLICATION or patent falling within the scope of DUKE PATENT RIGHTS, OREXIGEN will give DUKE timely written notice at least [***] ([***]) months in advance of the effective date of OREXIGEN’s decision and DUKE will be free to continue prosecution or maintain any such application(s)/patents, and to maintain any protection issuing thereon in the U.S. and in any foreign country at DUKE’s sole expense. In such instances, from the date of DUKE’s receipt of such written notice from OREXIGEN, such patent and/or DUKE PATENT APPLICATION shall no longer be considered to fall within the definition of DUKE PATENT RIGHTS (APPENDIX A shall be deemed to be so amended) and OREXIGEN shall forfeit all rights under this AGREEMENT to the subject issued patent(s) and/or subject DUKE PATENT APPLICATION and patent(s) arising from such PATENT APPLICATION. Accordingly, DUKE shall be free, at its sole discretion to license said patent(s) and patent application(s) to any THIRD PARTY or otherwise dispose of such patent(s) and patent applications(s) as it deems appropriate.