Common use of Patent Costs Clause in Contracts

Patent Costs. Licensee acknowledges and agrees that the licenses granted hereunder are in partial consideration for Licensee’s assumption of patent costs and expenses as described herein. Licensee agrees to pay and shall pay for all expenses referenced in Sections 8.1 and 8.2 hereof. In addition, Licensee agrees to reimburse and shall reimburse TSRI for all patent costs and expenses previously paid or associated with Licensed Patent Rights incurred by TSRI up to the Effective Date, less any such patent costs and expenses previously reimbursed by Licensee under the Option Agreement. Licensee agrees to pay and shall pay all such past and future patent expenses associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel and/or its independent counsel within thirty (30) days after Licensee receives an itemized invoice therefor. Failure of Licensee to pay patent costs and expenses as set forth in this Section 8.3 shall immediately relieve TSRI from its obligation to incur any further patent costs and expenses. For the avoidance of doubt, should Licensee not pay any patent costs and expenses due to TSRI or independent counsel within thirty (30) days after Licensee’s receipt of any itemized invoice therefor, TSRI shall have the right, at its sole discretion, to cease all patent prosecution and allow Licensed Patent Rights to go abandoned. Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRI. Licensee may elect with a minimum of ninety (90) days’ prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent Rights. Licensee shall remain liable for all patent prosecution and maintenance costs incurred prior to the date of notice of election and for a ninety (90) day period following the date of such notice. Any such patent application or patent so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.

Patent Costs. Licensee acknowledges and agrees that the licenses granted hereunder are in partial consideration for Licensee’s assumption of patent costs and expenses Patent Costs as described herein. Licensee agrees to pay and shall pay for to TSRI all expenses referenced in Patent Costs associated with the work performed by OPC with respect to the Licensed Patent Rights under Sections 8.1 and 8.2 hereof8.2, and shall either pay to TSRI or pay directly to outside patent counsel all Patent Costs associated with the work performed by such outside patent counsel with respect to the Licensed Patent Rights under Sections 8.1 and 8.2. In addition, Licensee agrees to reimburse and shall reimburse TSRI *** for all patent costs and expenses previously paid or associated with Licensed Patent Rights Costs incurred by TSRI up prior to the Effective Date, less any such patent costs and expenses previously reimbursed by Licensee under the Option Agreement. Licensee agrees to pay and shall pay all such past and future patent expenses Patent Costs associated with the such work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel OPC and/or its independent outside patent counsel within thirty (30) days after Licensee receives an itemized invoice therefor. Failure of If Licensee fails to pay or reimburse Patent Costs with respect to any patent costs and expenses application or patent within Licensed Patent Rights in any country as set forth in this Section 8.3 shall immediately relieve TSRI from its obligation to incur any further patent costs and expenses. For the avoidance of doubt, should Licensee does not pay any patent costs and expenses due to TSRI or independent counsel cure such failure within thirty (30) days after LicenseeTSRI’s receipt written demand for such payment or reimbursement, then TSRI shall be relieved of its obligation to incur any itemized invoice thereforfurther Patent Costs with respect to such patent application or patent in the applicable country, TSRI and shall have the right, at its sole discretion, to cease all patent prosecution and allow Licensed Patent Rights to go abandonedmaintenance of such patent application or patent in the applicable country. Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRI. Licensee may elect with a minimum of ninety sixty (9060) days’ prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent RightsRights on a country-by-country basis. Licensee shall remain liable for all patent prosecution and maintenance costs incurred prior to the date of notice of election and for a ninety (90) day period following the date of such noticeelection. Any such patent application or patent in such country(ies) so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.

Patent Costs. Licensee Company acknowledges and agrees that the licenses granted hereunder are in partial consideration for LicenseeCompany’s assumption of patent costs and expenses Patent Costs as described herein. Licensee agrees to pay and Company shall pay for to TSRI all expenses referenced in Patent Costs associated with the work performed by OPC with respect to the Licensed Patent Rights under Sections 8.1 and 8.2 hereof8.2, and shall either pay to TSRI or pay directly to outside patent counsel all Patent Costs associated with the work performed by such outside patent counsel with respect to the Licensed Patent Rights under Sections 8.1 and 8.2. In addition, Licensee Company agrees to reimburse and shall reimburse TSRI *** for all patent costs and expenses previously paid or associated with Licensed Patent Rights Costs incurred by TSRI up prior to the Effective Date, less any such patent costs of which *** shall be due and expenses previously reimbursed by Licensee under payable within 15 days after the Option AgreementEffective Date and *** shall be due and payable on the first anniversary of the Effective Date. Licensee Company agrees to pay and shall pay all such past and future patent expenses Patent Costs associated with the such work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel OPC and/or its independent outside patent counsel within thirty (30) 30 days after Licensee Company receives an itemized invoice therefor. Failure of Licensee If Company fails to pay or reimburse Patent Costs with respect to any patent costs and expenses application or patent within Licensed Patent Rights in any country as set forth in this Section 8.3 and does not cure such failure within 30 days after TSRI’s written demand for such payment or reimbursement, then TSRI shall immediately relieve TSRI from be relieved of its obligation to incur any further Patent Costs with respect to such patent costs application or patent in the applicable country, and expenses. For the avoidance of doubt, should Licensee not pay any patent costs and expenses due to TSRI or independent counsel within thirty (30) days after Licensee’s receipt of any itemized invoice therefor, TSRI shall have the right, at its sole discretion, to cease all patent prosecution and allow Licensed Patent Rights to go abandonedmaintenance of such patent application or patent in the applicable country. Such action by TSRI shall not constitute a breach *** Confidential material redacted and filed separately with the Commission. of this Agreement. Payment can be made directly to independent counsel, or to TSRI. Licensee Company may elect with a minimum of ninety (90) 60 days’ prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent RightsRights on a country-by-country basis. Licensee Company shall remain liable for all patent prosecution and maintenance costs incurred prior to the date of notice of election and for a ninety (90) day period following the date of such noticeelection. Any such patent application or patent in such country(ies) so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.

Patent Costs. Licensee acknowledges and agrees that the licenses granted hereunder are in partial consideration for Licensee’s assumption of patent costs and expenses as described herein. Licensee agrees agreement to pay and shall pay for all expenses referenced in Sections 8.1 and 8.2 hereof. In addition, Licensee agrees to reimburse and shall reimburse TSRI for all patent costs and expenses previously paid or associated with Licensed certain Patent Rights Costs incurred by TSRI up prior to the Effective Date. Accordingly, less any such patent costs and expenses previously reimbursed Licensee will reimburse TSRI for [***] of Patent Costs incurred by Licensee under TSRI prior to the Option AgreementEffective Date within [***] days after the Effective Date. Licensee agrees to pay and shall also be responsible for paying all future Patent Costs. Licensee shall pay to TSRI all such past and future patent expenses associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel and/or its independent counsel Costs within thirty (30) [***] days after Licensee receives an itemized invoice therefor. Failure of Licensee to pay patent costs and expenses as set forth in this Section 8.3 shall immediately relieve TSRI from its obligation to incur any further patent costs and itemizing such expenses. For the avoidance of doubt, should If Licensee does not timely pay any patent costs and expenses Patent Costs due to TSRI for work performed by TSRI’s OPC or independent due to outside patent counsel for work performed by such outside patent counsel pursuant to this Section 6.2, and Licensee fails to cure such nonpayment within thirty (30) [***] days after Licenseereceiving TSRI’s receipt of any itemized invoice thereforwritten notice regarding the same, then TSRI shall have the right, at its sole discretion, right to cease all further patent prosecution and maintenance and allow the Licensed Patent Rights to go abandoned. Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly , and to independent counsel, or instruct the joint outside patent counsel to TSRIdo the same. Licensee may elect with a minimum of ninety (90) [***] days’ prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent Rights. Licensee shall remain liable for all patent prosecution and maintenance fees and costs incurred prior to the date of such notice of election and for a ninety (90) during such [***] day period following the date of such noticenotice period. Any such patent application or patent so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert exclusively to TSRI and may be freely licensed by TSRI.

Patent Costs. Licensee acknowledges and agrees that the licenses license granted hereunder are is in partial consideration for Licensee’s assumption of patent costs and expenses as described herein. Licensee agrees to pay and shall pay for all reasonable expenses referenced in Sections Section 8.1 hereof for work performed by TSRI’s Office of Patent Counsel and 8.2 hereofits independent counsel. In addition, Licensee agrees to reimburse and shall reimburse TSRI for all reasonable patent costs and expenses previously paid or associated with Licensed Patent Rights incurred by TSRI up to the Effective Date, less any such patent costs and expenses previously reimbursed by Licensee under the Option AgreementRights. Licensee agrees to pay and shall pay all such past and future patent reasonable expenses associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel and/or its independent counsel within thirty (30) days after Licensee receives an itemized invoice therefor. Failure of Licensee to pay patent costs and expenses as set forth in this Section 8.3 shall immediately relieve TSRI from its obligation to incur any further patent costs and expenses. For expenses or to continue to prosecute the avoidance of doubtpatent applications; provided, should Licensee not pay any however, that TSRI’s obligation to incur patent costs and expenses due and to TSRI or independent counsel within thirty (30) days after prosecute the patent applications shall, to the extent possible, be immediately restored upon Licensee’s receipt payment of any itemized invoice therefor, TSRI shall have the right, at its sole discretion, to cease all such patent prosecution costs and allow Licensed Patent Rights to go abandoned. Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRIexpenses. Licensee may elect with a minimum of ninety (90) days’ days prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent RightsRights in those jurisdictions specified in such written notice. Licensee shall remain liable for all patent prosecution and maintenance costs of such patents or patent applications incurred prior to the date of notice of election and for a ninety (90) day period following the date of such notice. Any such patent application or patent so elected shall shall, for the jurisdictions specified in the written notice, immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.. * Confidential Information, indicated by [***], has been omitted from this filing and filed separately with the Securities and Exchange Commission

Patent Costs. Licensee acknowledges and agrees that the licenses license granted hereunder are is in partial consideration for Licensee’s assumption of patent costs and expenses as described herein. Licensee agrees to pay and shall pay for all expenses referenced in Sections 8.1 and 8.2 hereof. In addition, Licensee agrees to reimburse and shall reimburse TSRI for all patent costs and expenses previously paid or associated with Licensed Patent Rights incurred by TSRI up to the Effective Date, less any such patent costs and expenses previously reimbursed by Licensee under the Option AgreementSection 8.1. Licensee also agrees to pay and shall pay [***…***] according to schedule in Exhibit E, as well as all such past and future patent expenses associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel and/or its independent counsel selected in accordance with Section 8.1 within thirty (30) days after Licensee receives an itemized invoice therefor. Failure of Licensee to pay patent costs and expenses as set forth in this Section 8.3 shall immediately relieve TSRI from its obligation to incur any further patent costs and expenses. For the avoidance of doubt, should Licensee not pay be more than thirty (30) days in arrears for any patent costs and expenses due to TSRI or independent counsel within thirty (30) days after Licensee’s receipt of any itemized invoice thereforcounsel, TSRI shall have the right, at its sole discretion, to cease all patent prosecution and allow Licensed Patent Rights to go abandoned. Such action by TSRI shall not not, by itself, constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRI, at Licensee’s sole election. Licensee may elect with a minimum of ninety thirty (9030) days’ days prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent Rights. Licensee shall remain liable for all patent prosecution and maintenance costs incurred prior to the date of notice of election and for a ninety thirty (9030) day period following the date of such notice. Any such patent application or patent so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.

Patent Costs. Licensee acknowledges and agrees that the licenses granted hereunder are in partial consideration for Licensee’s assumption of patent costs and expenses as described herein. Licensee agrees to pay and shall pay for all expenses referenced in Sections 8.1 and 8.2 hereof. In addition, Licensee agrees to reimburse and shall reimburse TSRI for all patent costs and expenses previously paid or associated with Licensed Patent Rights incurred by TSRI up to the Effective Date, less any such patent costs and expenses previously reimbursed by Licensee under the Option Agreement. Licensee agrees to pay and shall pay all such past and future patent expenses associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel and/or its independent counsel within thirty (30) days after Licensee receives an itemized invoice therefor. Failure of Licensee to pay patent costs and expenses as set forth in this Section 8.3 shall immediately relieve TSRI from its obligation to incur any further patent costs and expenses. For the avoidance of doubt, should Licensee not pay any patent costs and expenses due to TSRI or independent counsel within thirty (30) days after Licensee’s receipt of any itemized invoice therefor, TSRI shall have the right, at its sole discretion, to cease all patent prosecution and allow Licensed Patent Rights to go abandoned. Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRI. Licensee may elect with a minimum of ninety (90) days’ prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent Rights. Licensee shall remain liable for all patent prosecution and maintenance costs incurred prior to the date of notice of election and for a ninety (90) day period following the date of such notice. Any such patent application or patent so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.Patent

Patent Costs. Licensee acknowledges and agrees that the licenses granted hereunder are in partial consideration for Licensee’s assumption of patent costs fees and expenses as described herein. Licensee agrees to pay and shall pay to TSRI all fees and expenses for all expenses the work referenced in Sections 8.1 7.1 and 8.2 hereof7.2. In addition, Licensee agrees to reimburse and shall reimburse pay TSRI for all patent costs fees and expenses previously paid or associated incurred by TSRI’s OPC and its outside patent counsel with respect to the Licensed Patent Rights incurred by TSRI up to before the Effective Date, less any such patent costs and expenses previously reimbursed by Licensee under the Option Agreement. Licensee agrees to pay and shall pay to TSRI all such past and future patent fees and expenses associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel OPC and/or its independent outside patent counsel within thirty (30) days after Licensee receives an itemized invoice thereforitemizing such expenses. Failure of Licensee to pay patent costs fees and expenses as set forth in this Section 8.3 7.3 shall immediately relieve TSRI from its obligation to incur any further patent costs fees and expenses. For the avoidance of doubtclarity, should if Licensee does not pay any patent costs fees and expenses due to TSRI (for work performed by TSRI’s OPC or independent counsel by outside patent counsel) within thirty (30) days after Licensee’s receipt of any an itemized invoice therefor, TSRI shall have the right, at in its sole discretion, to cease all patent prosecution and maintenance and allow Licensed Patent Rights to go abandoned. ***Confidential Treatment Requested Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRI. Licensee may elect with a minimum of ninety (90) […***…] days’ prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent Rights. Licensee shall remain liable for all patent prosecution and maintenance fees and costs incurred prior to the date of such notice of election and for a ninety (90) day period following the date of during such notice[…***…]-day notice period. Any such patent application or patent so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert exclusively to TSRI and may be freely licensed by TSRI.

Patent Costs. Licensee acknowledges and agrees that the licenses license granted hereunder are is in partial consideration for Licensee’s assumption of patent costs and expenses as described herein. Licensee agrees to pay and shall pay for all expenses referenced in Sections Section 8.1 and 8.2 hereof. In addition, Licensee agrees to reimburse reimburse, and shall reimburse reimburse, TSRI for all reasonable, unreimbursed patent costs and expenses previously paid or associated with Licensed Patent Rights incurred by TSRI up to as of the Effective Date. Licensee agrees to pay, less any and shall pay, all such unreimbursed past patent costs and expenses previously reimbursed by Licensee under the Option Agreement. Licensee agrees to pay and shall pay all such past and reasonable future patent expenses associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel and/or its independent counsel within thirty (30) days after Licensee receives an itemized invoice therefor. Failure of Licensee to pay patent costs and expenses as set forth in this Section 8.3 shall [**] = Portions of this exhibit have been omitted pursuant to a confidential treatment request. An unredacted version of the exhibit has been filed separately with the Commission. immediately relieve TSRI from its obligation to incur any further patent costs and expenses. , For the avoidance of doubt, should Licensee not pay be in arrears for any patent costs and expenses due to TSRI or independent counsel within thirty (30) days after Licensee’s receipt of any itemized invoice thereforcounsel, TSRI shall have the right, at its sole discretion, to cease all patent prosecution and allow the Licensed Patent Rights to go abandoned. Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRI. Licensee may elect with a minimum of ninety (90) days’ days prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within the Licensed Patent Rights. Licensee shall remain liable for all patent prosecution and maintenance costs incurred prior to the date of notice of election and for a ninety (90) day period following the date of such notice. Any such patent application or patent so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.

Patent Costs. Licensee acknowledges and agrees that the licenses license granted hereunder are is in partial consideration for Licensee’s assumption of patent costs and expenses as described herein. Licensee agrees to pay and shall pay for all expenses referenced in Sections 8.1 and 8.2 hereof. In addition, Licensee agrees to reimburse and shall reimburse TSRI Twenty Four Thousand Six Hundred Forty Three Dollars ($24,643.00) for all patent costs fees and expenses previously paid or associated incurred in connection with Licensed Patent Rights incurred by TSRI up to the Effective Datewhich are as of October 31, less any such patent costs and expenses previously reimbursed by Licensee under the Option Agreement2006. Licensee agrees to pay and shall pay all such past fees, costs, and future cost and patent expenses fees associated with the work on the Licensed Patent Rights performed by TSRI’s Office of Patent Counsel and/or its independent counsel Independent Counsel to prepare, prosecute, and maintain the Licensed Patent Rights within thirty (30) days after Licensee receives an itemized invoice therefor. Failure of Licensee to pay patent costs and expenses as set forth in this Section 8.3 shall immediately relieve TSRI from its obligation to incur any further patent costs and expenses. For the avoidance of doubt, should Licensee not pay be in arrears for any patent costs and expenses due to TSRI or for independent counsel within thirty (30) days after Licensee’s receipt of any itemized invoice thereforcounsel, TSRI shall have the right, at its sole discretion, to cease all patent prosecution and allow Licensed Patent Rights to go abandoned. Such action by TSRI shall not constitute a breach of this Agreement. Payment can be made directly to independent counsel, or to TSRI, as the Parties may agree. Licensee may elect with a minimum of ninety (90) days’ days prior written notice to TSRI, to discontinue payment for the filing, prosecution and/or maintenance of any patent application and/or patent within Licensed Patent Rights. Licensee shall remain liable for all patent prosecution and maintenance costs incurred prior to the date of notice of election and for a ninety (90) day period following the date of such notice. Any such patent application or patent so elected shall immediately be excluded from the definition of Licensed Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to TSRI and may be freely licensed by TSRI.