Common use of Patent Costs Clause in Contracts

Patent Costs. Without affecting Demeter's obligation to LSU for patent prosecution under the License Agreement, Licensee will pay all reasonable out-of-pocket costs, fees and attorneys' fees and expenses of maintenance and/or further prosecution of (i) the LSU Licensed Patents, (ii) the Supplemental Patent Rights and (iii) the Licensed Patents listed under Section A1 of Appendix A, before the United States Patent and Trademark Office and before any other office or entity concerning patents (related to Licensed Patents) in those nations other than the United States of America which have been selected by Licensee for foreign patent protection on a patent-by-patent basis. Licensee will have a right to review any such patent applications and advise on the coverage of protection sought to the extent within the scope of the license rights granted under this Agreement. Demeter may elect to seek patent protection for Licensed Patents in countries not selected by Licensee at Demeter's expense; however, in such event, Licensee will forfeit its rights with respect to affected patents in such countries. Licensee will be entitled to a credit of fifty percent (50%) of the cumulative costs and fees paid by Licensee pursuant to this Paragraph against any royalty or other payments that may be due to Demeter under this Agreement. No credit may be taken prior to the third anniversary of the effective date. Thereafter, no more than 50% of the amount due Demeter under this Agreement in any given year may be offset by such credit. Licensee will have no obligation to pay any costs or fees in connection with the prosecution and/or maintenance of the Licensed Patents listed under Section A2 or A3 of Appendix A under this Agreement, except to the extent that Licensee elects to make such payments with respect to the Section A3 patents as set forth in Article VI.

Patent Costs. Without affecting Demeter's obligation (A) Upon execution of this Agreement, Epitope shall pay to LSU Salk [ ]* as reimbursement for patent prosecution the percentages of Patent Costs incurred through 1996 specified in Schedule A. Epitope shall reimburse Salk for said percentages of Patent Costs thereafter incurred during the term of this Agreement with respect to the Patent Rights; provided that each percentage of Patent Costs to be borne by Epitope is to be based on and shared with other licensees and options under the License Patent Rights on a pro rata basis, with the number of licensees. If Epitope exercises its option rights under this Agreement, Licensee will pay all reasonable Epitope's pro rata share of the Patent Costs shall be determined based upon the number of licenses then existing and the extent of the Field of Use and Territory on a Schedule A entry by entry basis. If Salk subsequently obtains additional licensees, then Epitope's pro rata share of the Patent Costs shall be reduced by Salk accordingly. Conversely, if one or more licensees terminate their interest then Epitope's share of the Patent Costs shall increase. "Patent Costs" as used in this Agreement shall mean only out-of-pocket costs* Bracketed material has been omitted and filed separately with the Commission pursuant to a request for confidential treatment. expenses incurred in connection with the preparation, fees filing, prosecution up to and attorneys' through appeal from a final rejection by an Examiner of the United States Patent Office and maintenance of United States patent applications and patents, including the fees and expenses of attorneys and patent agents, filing fees and maintenance and/or further prosecution fees, and the filing of (i) an application under the LSU Licensed PatentsPatent Cooperation Treaty, (ii) the Supplemental but excluding costs associated with any patent infringement actions. Salk will provide an invoice to Epitope for Epitope's pro rata share of any such Patent Rights and (iii) the Licensed Patents listed under Section A1 of Appendix A, before the United States Patent and Trademark Office and before any other office or entity concerning patents (related to Licensed Patents) in those nations other than the United States of America which have been selected by Licensee for foreign patent protection Costs on a patent-by-patent semiannual basis. Licensee will have a right to review , and Epitope shall reimburse Salk for its share of Patent Costs within thirty (30) days after delivery of any such patent applications and advise on the coverage of protection sought invoice. Notwithstanding anything above to the extent within the scope of the license rights granted under this Agreement. Demeter may elect to seek patent protection for Licensed Patents in countries not selected by Licensee at Demeter's expense; however, in such event, Licensee will forfeit its rights with respect to affected patents in such countries. Licensee will be entitled to a credit of fifty percent (50%) of the cumulative costs and fees paid by Licensee pursuant to this Paragraph against any royalty or other payments that may be due to Demeter under this Agreement. No credit may be taken prior to the third anniversary of the effective date. Thereafter, no more than 50% of the amount due Demeter under this Agreement in any given year may be offset by such credit. Licensee will have no obligation to pay any costs or fees in connection with the prosecution and/or maintenance of the Licensed Patents listed under Section A2 or A3 of Appendix A under this Agreement, except to the extent that Licensee elects to make such payments with respect to the Section A3 patents as set forth in Article VI.contrary:

Patent Costs. Without affecting Demeter's obligation to LSU for patent prosecution under the License (a) Upon execution of this Agreement, Licensee shall pay to Salk Eleven Thousand Four Hundred Forty Three dollars and Fifteen cents ($11,443.15) as reimbursement for all unreimbursed Patent Costs incurred through December 31, 2003. Licensee shall reimburse Salk for all Patent Costs thereafter incurred with respect to the Patent Rights. (b) Salk will pay all provide an invoice to Licensee for Patent Costs at least semiannually, which invoice shall be accompanied by reasonable outdocumentation regarding such legal expenses, and Licensee shall reimburse Salk for such Patent Costs within thirty (30) days after delivery of any such invoice. Pursuant to Section 9.5, late payments shall be subject to a charge of one and one-ofhalf percent (1.5%) per month compounded. The payment of such late charges shall not prevent Salk from exercising any other rights it may have as a consequence of the lateness of any payment. (c) Licensee may elect to surrender its license to any particular Patent Rights in any country by providing to Salk written notice of such intent at least sixty (60) days prior to such surrender. Such notice may be provided by mail, electronic mail or facsimile directly to Salk in house patent counsel. Such notice shall not relieve Licensee from responsibility to reimburse Salk for patent-pocket costsrelated expenses incurred prior to the expiration of the sixty (60) day notice period (or such longer period specified in Licensee’s notice). In the event Licensee elects to surrender any license to any particular Patent Rights, fees and attorneys' fees and expenses such patent application or patent shall be excluded from the definition of maintenance and/or further prosecution of (i) the LSU Licensed Patents, (ii) the Supplemental Patent Rights and (iii) the Licensed Patents listed under Section A1 of Appendix A, before the United States Patent and Trademark Office and before any other office or entity concerning patents (related to Licensed Patents) in those nations other than the United States of America which have been selected by Licensee for foreign patent protection on a patent-by-patent basis. Licensee will have a right to review any such patent applications and advise on the coverage of protection sought to the extent within from the scope of the license rights granted under this Agreement. Demeter , and all rights relating thereto shall revert to Salk and may elect be freely licensed by Salk, If Licensee surrenders its Patent Rights in a given country a patent application or patent included in the Patent Rights and Salk, ceases to seek prosecute such patent protection for Licensed Patents in countries application or maintain such patent, Licensee shall not selected sell a product covered by Licensee at Demeter's expense; howeverthe claims of any such patent as issued or, in such eventthe case of an application, covered in the claims as written at the time Licensee will forfeit notified Salk of its rights with respect decision not to affected patents in such countries. support the application, unless Licensee will be entitled is obligated to a credit of fifty percent (50%) of the cumulative costs and fees paid by Licensee pursuant to this Paragraph against any royalty or pay royalties and/or other payments that may be due to Demeter under this Agreement. No credit may be taken prior to the third anniversary of the effective date. Thereafter, no more than 50% of the amount due Demeter under this Agreement on sales in any given year may be offset said country because such product is covered by such credit. Licensee will have no obligation to pay any costs another patent or fees in connection with the prosecution and/or maintenance of the Licensed Patents listed under Section A2 or A3 of Appendix A under this Agreement, except to the extent that Licensee elects to make such payments with respect to the Section A3 patents as set forth in Article VIpatent application licensed hereunder.

Patent Costs. Without affecting Demeter's obligation EPIcyte acknowledges and agrees that Scripps does not have independent funding to LSU cover patent costs, and that the license granted hereunder is in part in consideration for EPIcyte’s assumption of patent prosecution under costs and expenses as described herein. EPIcyte shall pay for all expenses incurred by Scripps pursuant to Section 3.1 hereof. In addition, EPIcyte agrees to reimburse Scripps for all patent costs and expenses paid or incurred by Scripps to date in connection with Scripps Patent Rights licensed hereunder. EPIcyte agrees to pay to Scripps the License Agreementsum of fifteen thousand dollars ($15,000) within ninety (90) days of the execution of this Agreement and the remaining patent costs and expenses paid or incurred by Scripps as of the effective date of this agreement in connection with Scripps Patent Rights licensed hereunder by April 15, Licensee will 1998. For all patent expenses incurred by Scripps after the effective date of this Agreement EPIcyte agrees to pay all reasonable out-of-pocket costssuch past and future patent expenses directly or to reimburse Scripps for the payment of such expenses within sixty (60) days after EPIcyte receives an itemized invoice therefor. In the event EPIcyte elects to discontinue payment for the filing, fees and attorneys' fees and expenses prosecution and/or maintenance of maintenance any patent application and/or further prosecution patent within Scripps Patent Rights, any such patent application or patent shall be excluded from the definition of (i) the LSU Licensed Patents, (ii) the Supplemental Scripps Patent Rights and (iii) the Licensed Patents listed under Section A1 of Appendix A, before the United States Patent and Trademark Office and before any other office or entity concerning patents (related to Licensed Patents) in those nations other than the United States of America which have been selected by Licensee for foreign patent protection on a patent-by-patent basis. Licensee will have a right to review any such patent applications and advise on the coverage of protection sought to the extent within from the scope of the license rights granted under this Agreement, and all rights relating thereto shall revert to Scripps and may be freely licensed by Scripps. Demeter may elect EPIcyte shall give Scripps at least sixty (60) days’ prior written notice of such election. No such notice shall have any effect on EPIcyte’s obligations to seek patent protection for Licensed Patents in countries not selected by Licensee at Demeter's expense; however, in pay expenses incurred up to the effective date of such event, Licensee will forfeit its rights election. Portions of this Exhibit were omitted and have been filed separately with respect to affected patents in such countries. Licensee will be entitled to a credit of fifty percent (50%) the Secretary of the cumulative costs and fees paid by Licensee Commission pursuant to this Paragraph against any royalty or other payments that may be due to Demeter the Company’s application requesting confidential treatment under this Agreement. No credit may be taken prior to the third anniversary Rule 406 of the effective date. Thereafter, no more than 50% of the amount due Demeter under this Agreement in any given year may be offset by such credit. Licensee will have no obligation to pay any costs or fees in connection with the prosecution and/or maintenance of the Licensed Patents listed under Section A2 or A3 of Appendix A under this Agreement, except to the extent that Licensee elects to make such payments with respect to the Section A3 patents as set forth in Article VISecurities Act.

Patent Costs. Without affecting Demeter's obligation 1. Subject to LSU for patent prosecution under Section 8.7.2.3, within [***] after the License AgreementAmendment Date, Licensee will pay reimburse Penn for all reasonable documented out-of-pocket costscosts for the filing, prosecution and maintenance of DRG Patent Right(s) for the filing, prosecution and maintenance of DRG Patent Rights, including all accrued and documented attorney fees, expenses, official and filing fees and attorneys' fees and expenses (“DRG Patent Costs”), incurred prior to the Amendment Date, which have not otherwise been reimbursed by Licensee or other licensees of maintenance and/or further prosecution of (i) the LSU Licensed Patents, (ii) the Supplemental such DRG Patent Rights and (iii“Historic DRG Patent Costs”). Notwithstanding the first sentence of this Section 8.7.2.1, for DRG Patent Right(s) licensed by Penn to more than one licensee, Licensee shall be responsible for payment to Penn of a pro rata share of such documented Historic DRG Patent Costs based on the Licensed Patents listed under Section A1 number of Appendix A, before the United States licensees for such Patent and Trademark Office and before any other office or entity concerning patents (related to Licensed Patents) in those nations other than the United States of America which have been selected by Licensee for foreign patent protection on a patent-by-patent basisRights. 2. Licensee will have bear (a) all DRG Patent Costs incurred during the Term for DRG Patent Right(s) (“Ongoing DRG Patent Costs”). Notwithstanding the foregoing, for DRG Patent Rights licensed by Penn to more than one licensee, Licensee shall be responsible for payment to Penn of a right to review any pro rata share of such patent applications and advise documented Ongoing DRG Patent Costs based on the coverage number of protection sought licensees for such DRG Patent Rights. No later than sixty (60) days prior to the end of each Calendar Year during the Term, Penn shall provide to Licensee, a good faith estimate and budget for the Ongoing DRG Patent Costs anticipated to be incurred for the next Calendar Year and, to the extent within the scope applicable, Licensee’s proportionate share of the license rights granted under this Agreementsuch Ongoing DRG Patent Costs. Demeter may elect This Section 8.7.2 is subject to seek patent protection for Licensed Patents in countries not selected by Licensee at Demeter's expense; however, in such eventSection 8.7.1 above. 3. With respect to DRG Patent Right(s), Licensee will forfeit shall be subject to Advance Payment. Notwithstanding whether Licensee makes an Advance Payment for any patent action, Licensee shall bear its rights pro rata share (based on the number of licensees for such DRG Patent Rights) of all DRG Patent Costs with respect to affected patents in such countries. Licensee will be entitled to a credit of fifty percent (50%DRG Patent Right(s) of the cumulative costs and fees paid by Licensee pursuant to this Paragraph against any royalty or other payments that may be due to Demeter under this Agreement. No credit may be taken prior to the third anniversary of the effective date. Thereafter, no more than 50% of the amount due Demeter under this Agreement in any given year may be offset by such credit. Licensee will have no obligation to pay any costs or fees in connection with the prosecution and/or maintenance of the Licensed Patents listed under Section A2 or A3 of Appendix A under this Agreement, except to the extent that Licensee elects to make such payments with respect to the Section A3 patents as set forth in Article VIthis Section 8.7.2, above, and shall pay such amounts within [***] of receipt of invoice for such patent actions. 4. Licensee shall also have the right, on a DRG Patent Right-by-DRG Patent Right and country-by-country basis, to (i) elect not to fund at the time of disclosure, or (ii) elect not to continue to fund, in each case (i) and (ii), its pro rata share (as determined pursuant to this Section 8.7 above) of the DRG Patent Costs with respect to any DRG Patent Right(s) in a particular country, which election may be made by Licensee upon sixty (60) days prior written notice to Penn (“DRG Election Notice”). If Licensee delivers a DRG Election Notice to Penn, following the expiration of such sixty (60) day period, Licensee shall have no further obligation to pay Ongoing DRG Patent Costs with respect to any DRG Patent Right identified in such DRG Election Notice in any country identified in such DRG Election Notice and any such Patent Right in any such country shall thereafter be excluded from the DRG Patent Rights.