Common use of Patent Fees and Costs Clause in Contracts

Patent Fees and Costs. (i) Licensee also agrees to reimburse XXXX for (****) percent ((****)%) of all reasonable costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix X-0, X-0 and B-4; ((****)%) of all reasonable costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix B-2; and a fee of (****) dollars ($(****)) for costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix B-5. Licensee will be billed quarterly and will pay amounts owed within thirty (30) days of receipt of an invoice from XXXX. (ii) XXXX will maintain and continue to prosecute each patent application that is a Licensed Patent as of the Effective Date until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in the country in which the application is filed. (iii) Licensee may request, by written notice to XXXX, that XXXX file, maintain and/or prosecute foreign patent application(s) with respect to any invention subject to a Licensed Patent exclusively licensed to Licensee filed in the United States. Any such written notice will specify the country or countries, as may be the case, in which Licensee requests that the filing(s) are to be made, maintained and/or prosecuted by XXXX. Promptly after XXXX undertakes to file any patent application pursuant to Licensee's request, XXXX will give written notice that it is doing so to Licensee. Licensee will reimburse XXXX for (****) percent ((****)%) of all costs associated with preparing, filing and maintaining such filings in the manner provided in Section 4E(i) above. XXXX will make, maintain and prosecute each and every patent application it files at Licensee's request pursuant to this Section 4E(iii) until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in that country. (iv) Licensee will have the right to review and comment on any significant prosecution actions and correspondences received pertaining to the filing, prosecution and maintenance of the Licensed Patents exclusively licensed to Licensee. XXXX will forward a copy of such actions and correspondence to Licensee within (****) of their receipt by XXXX. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within (****) from the date XXXX provided the copy of the action or correspondence to Licensee.

Patent Fees and Costs. (i) Licensee also agrees to reimburse XXXX for (****) percent ((****)%) of all reasonable documented out of pocket costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed during the term of this Agreement. All such amounts shall accrue for a period of four (4) years after the Effective Date ("Accrual Period"), at which time XXXX shall begin invoicing Licensee on Appendix X-0an annual basis. Amounts accrued during the Accrual Period shall be paid to XXXX in four (4) equal annual installments beginning on the four (4) year anniversary date of the Effective Date. Within thirty (30) days of the end of each year during the Accrual Period, X-0 XXXX shall provide Licensee with a report detailing the costs and B-4; ((****expenses to be reimbursed to XXXX under this Section 4E(i)%) of all reasonable . All costs incurred by XXXX in filing, prosecuting and maintaining after the Licensed Patents listed on Appendix B-2; and a fee of (****) dollars ($(****)) for costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix B-5. Licensee will Accrual Period shall be billed quarterly on an annual basis and will pay shall be in addition to any accrued amounts then owed to XXXX. All amounts due to XXXX under this Section 4E shall be paid within thirty (30) days of receipt of receiving an invoice from XXXX. (ii) XXXX will is not obligated to make or maintain and continue to prosecute each patent application that is a Licensed Patent as any foreign filing of the Effective Date until Licensed Patents, except as expressly requested by Licensee pursuant to this Section 4E. XXXX determines shall notify Licensee in writing ninety (90) days prior to the expiration of the deadline for making or maintaining such foreign filings, and if Licensee desires XXXX to make or maintain such foreign filings, Licensee must notify XXXX in writing forty-five (45) days prior to the expiration of the deadline for making or maintaining such foreign filings, indicating those countries in which Licensee desires XXXX to pursue foreign patent protection. XXXX reserves the right to file a patent application, at its own expense, in any countries or territories not requested by Licensee ("Non-Elected Territories"), provided that continued prosecution is unlikely XXXX has specifically notified Licensee of its intent to result pursue such patent protection and Licensee has specifically, in writing, declined to have XXXX pursue such patent protection on its behalf pursuant to this Section 4E. In the event that XXXX elects to file any patent applications in Non-Elected Territories, XXXX hereby grants Licensee a right of first negotiation for the exclusive rights to any patents or patent applications for the Non-Elected Territories, and XXXX shall not sublicense any of its rights to the patents and patent applications in the issuance Non-Elected Territories to any third party without providing Licensee the right of a patent first negotiation as provided in this Section 4E(ii). XXXX shall promptly notify Licensee in writing of its intent to license the rights in the country Non-Elected Territories and provide a good faith commercially reasonable proposal for such license ("Initial Notice"). Licensee shall notify XXXX in writing within sixty (60) days of its receipt of the Initial Notice as to whether Licensee wishes to obtain such license. If Licensee elects to license such rights, the parties shall negotiate such license in good faith. If Licensee elects not to license such rights, or if the parties are unable to reach agreement on the license proposed in the Initial Notice, within three (3) months of Licensee's receipt of the Initial Notice, XXXX shall be free to enter into discussions with third parties to license rights in the Non-Elected Territories. Licensee acknowledges that if the United States Government (through any of its agencies or otherwise) has funded research, during the course of or under which any of the application inventions of the Licensed Patents were conceived or made, the United States Government is filedentitled, as a right, under the provisions of 35 U.S.C. § 200-212 and applicable regulations of Chapter 37 of the Code of Federal Regulations, to make and maintain foreign filings in those countries not selected by Licensee and/or XXXX. (iii) Licensee may request, by written notice to XXXX, that XXXX file, maintain and/or prosecute foreign patent application(s) with respect to any invention subject to a Licensed Patent exclusively licensed to Licensee filed in the United States. Any such written notice will specify the country or countries, as may be the case, in which Licensee requests that the filing(s) are to be made, maintained and/or prosecuted by XXXX. Promptly after XXXX undertakes to file any patent application pursuant to Licensee's request, XXXX will give written notice that it is doing so to Licensee. Licensee will reimburse XXXX for (****) percent ((****)%) of prosecute all costs associated with preparing, filing and maintaining such filings in the manner provided in Section 4E(i) above. XXXX will make, maintain and prosecute each and every patent application national applications it files at Licensee's request pursuant to this Section 4E(iii) 4E until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in that country. (iv) . Licensee will shall have the right to review and comment on any significant prosecution actions and correspondences received pertaining to the filing, prosecution and Colby Pharma PMCol License 06-0524 4 maintenance of the Licensed Patents exclusively licensed to LicenseePatents. XXXX will shall forward a copy of such actions and correspondence to Licensee within thirty (****30) days of their receipt by XXXX. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within thirty (****30) days from the date XXXX provided the copy of the action or correspondence to Licensee. If XXXX decides to abandon prosecution or maintenance of any patent or patent application under the Licensed Patents in a country in which Licensee has requested XXXX to make and maintain such filing, XXXX shall provide Licensee notice of XXXX'x intent to abandon such patent or patent application in writing forty-five (45) days prior to the expiration of the deadline for abandonment. In such event, Licensee shall have the right to continue maintenance or prosecution of said patent or patent application, at its own expense, on behalf of XXXX and Licensee, to the extent allowed under applicable law.

Patent Fees and Costs. (i) Licensee also agrees to reimburse XXXX for ([****) ] percent (([****)]%) of all reasonable costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix X-0, X-0 and B-4; (([****)]%) of all reasonable costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix B-2; and a fee of ([****) ] dollars ($([****)]) for costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix B-5. Licensee will be billed quarterly and will pay amounts owed within thirty (30) days of receipt of an invoice from XXXX. (ii) XXXX will maintain and continue to prosecute each patent application that is a Licensed Patent as of the Effective Date until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in the country in which the application is filed. (iii) Licensee may request, by written notice to XXXX, that XXXX file, maintain and/or prosecute foreign patent application(s) with respect to any invention subject to a Licensed Patent exclusively licensed to Licensee filed in the United States. Any such written notice will specify the country or countries, as may be the case, in which Licensee requests that the filing(s) are to be made, maintained and/or prosecuted by XXXX. Promptly after XXXX undertakes to file any patent application pursuant to Licensee's ’s request, XXXX will give written notice that it is doing so to Licensee. Licensee will reimburse XXXX for ([****) ] percent (([****)]%) of all costs associated with preparing, filing and maintaining such filings in the manner provided in Section 4E(i) above. XXXX will make, maintain and prosecute each and every patent application it files at Licensee's ’s request pursuant to this Section 4E(iii) until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in that country. (iv) Licensee will have the right to review and comment on any significant prosecution actions and correspondences received pertaining to the filing, prosecution and maintenance of the Licensed Patents exclusively licensed to Licensee. XXXX will forward a copy of such actions and correspondence to Licensee within ([***] ([***]) days of their receipt by XXXX. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within ([***] ([***]) days from the date XXXX provided the copy of the action or correspondence to Licensee. (v) Interferences. [***]1 [***]

Patent Fees and Costs. (i) Licensee also agrees to reimburse XXXX for (****) percent ((****)%) of all reasonable documented out of pocket costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed during the term of this Agreement. All such amounts shall accrue for a period of four (4) years after the Effective Date ("Accrual Period"), at which time XXXX shall begin invoicing Licensee on Appendix X-0an annual basis. Amounts accrued during the Accrual Period shall be paid to XXXX in four (4) equal annual installments beginning on the four (4) year anniversary date of the Effective Date. Within thirty (30) days of the end of each year during the Accrual Period, X-0 XXXX shall provide Licensee with a report detailing the costs and B-4; ((****expenses to be reimbursed to XXXX under this Section 4E(i)%) of all reasonable . All costs incurred by XXXX in filing, prosecuting and maintaining after the Licensed Patents listed on Appendix B-2; and a fee of (****) dollars ($(****)) for costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix B-5. Licensee will Accrual Period shall be billed quarterly on an annual basis and will pay shall be in addition to any accrued amounts then owed to XXXX. All amounts due to XXXX under this Section 4E shall be paid within thirty (30) days of receipt of receiving an invoice from XXXX. (ii) XXXX will is not obligated to make or maintain and continue to prosecute each patent application that is a Licensed Patent as any foreign filing of the Effective Date until Licensed Patents, except as expressly requested by Licensee pursuant to this Section 4E. XXXX determines shall notify Licensee in writing ninety (90) days prior to the expiration of the deadline for making or maintaining such foreign filings, and if Licensee desires XXXX to make or maintain such foreign filings, Licensee must notify XXXX in writing forty-five (45) days prior to the expiration of the deadline for making or maintaining such foreign filings, indicating those countries in which Licensee desires XXXX to pursue foreign patent protection. XXXX reserves the right to file a patent application, at its own expense, in any countries or territories not requested by Licensee ("Non-Elected Territories"), provided that continued prosecution is unlikely XXXX has specifically notified Licensee of its intent to result pursue such patent protection and Licensee has specifically, in writing, declined to have XXXX pursue such patent protection on its behalf pursuant to this Section 4E. In the event that XXXX elects to file any patent applications in Non-Elected Territories, XXXX hereby grants Licensee a right of first negotiation for the exclusive rights to any patents or patent applications for the Non-Elected Territories, and XXXX shall not sublicense any of its rights to the patents and patent applications in the issuance Non-Elected Territories to any third party without providing Licensee the right of a patent first negotiation as provided in this Section 4E(ii). XXXX shall promptly notify Licensee in writing of its intent to license the rights in the country Non-Elected Territories and provide a good faith commercially reasonable proposal for such license ("Initial Notice"). Licensee shall notify XXXX in writing within sixty (60) days of its receipt of the Initial Notice as to whether Licensee wishes to obtain such license. If Licensee elects to license such rights, the parties shall negotiate such license in good faith. If Licensee elects not to license such rights, or if the parties are unable to reach agreement on the license proposed in the Initial Notice, within three (3) months of Licensee's receipt of the Initial Notice, XXXX shall be free to enter into discussions with third parties to license rights in the Non-Elected Territories. Licensee acknowledges that if the United States Government (through any of its agencies or otherwise) has funded research, during the course of or under which any of the application inventions of the Licensed Patents were conceived or made, the United States Government is filedentitled, as a right, under the provisions of 35 U.S.C. § 200-212 and applicable regulations of Chapter 37 of the Code of Federal Regulations, to make and maintain foreign filings in those countries not selected by Licensee and/or XXXX. (iii) Licensee may request, by written notice to XXXX, that XXXX file, maintain and/or prosecute foreign patent application(s) with respect to any invention subject to a Licensed Patent exclusively licensed to Licensee filed in the United States. Any such written notice will specify the country or countries, as may be the case, in which Licensee requests that the filing(s) are to be made, maintained and/or prosecuted by XXXX. Promptly after XXXX undertakes to file any patent application pursuant to Licensee's request, XXXX will give written notice that it is doing so to Licensee. Licensee will reimburse XXXX for (****) percent ((****)%) of prosecute all costs associated with preparing, filing and maintaining such filings in the manner provided in Section 4E(i) above. XXXX will make, maintain and prosecute each and every patent application national applications it files at Licensee's request pursuant to this Section 4E(iii) 4E until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in that country. (iv) . Licensee will shall have the right to review and comment on any significant prosecution actions and correspondences received pertaining to the filing, prosecution and Colby Pharma MDL License 06-0525 14 maintenance of the Licensed Patents exclusively licensed to LicenseePatents. XXXX will shall forward a copy of such actions and correspondence to Licensee within thirty (****30) days of their receipt by XXXX. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within thirty (****30) days from the date XXXX provided the copy of the action or correspondence to Licensee. If XXXX decides to abandon prosecution or maintenance of any patent or patent application under the Licensed Patents in a country in which Licensee has requested XXXX to make and maintain such filing, XXXX shall provide Licensee notice of XXXX'x intent to abandon such patent or patent application in writing forty-five (45) days prior to the expiration of the deadline for abandonment. In such event, Licensee shall have the right to continue maintenance or prosecution of said patent or patent application, at its own expense, on behalf of XXXX and Licensee, to the extent allowed under applicable law.

Patent Fees and Costs. (i) Licensee also agrees to reimburse XXXX for (****) percent ((****)%) of all reasonable documented out of pocket costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed during the term of this Agreement. All such amounts shall accrue for a period of four (4) years after the Effective Date ("Accrual Period"), at which time XXXX shall begin invoicing Licensee on Appendix X-0an annual basis. Amounts accrued during the Accrual Period shall be paid to XXXX in four (4) equal annual installments beginning on the four (4) year anniversary date of the Effective Date. Within thirty (30) days of the end of each year during the Accrual Period, X-0 XXXX shall provide Licensee with a report detailing the costs and B-4; ((****expenses to be reimbursed to XXXX under this Section 4E(i)%) of all reasonable . All costs incurred by XXXX in filing, prosecuting and maintaining after the Licensed Patents listed on Appendix B-2; and a fee of (****) dollars ($(****)) for costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed on Appendix B-5. Licensee will Accrual Period shall be billed quarterly on an annual basis and will pay shall be in addition to any accrued amounts then owed to XXXX. All amounts due to XXXX under this Section 4E shall be paid within thirty (30) days of receipt of receiving an invoice from XXXX. (ii) XXXX Licensee acknowledges that foreign rights are not available under the Licensed Patents. WARP will maintain and continue to prosecute each patent application that is a the Licensed Patent as of the Effective Date Patents until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in the country in which the application is filed. (iii) Licensee may request, by written notice to XXXX, that XXXX file, maintain and/or prosecute foreign patent application(s) with respect to any invention subject to a Licensed Patent exclusively licensed to Licensee filed in the United States. Any such written notice will specify the country or countries, as may be the case, in which Licensee requests that the filing(s) are to be made, maintained and/or prosecuted by XXXX. Promptly after XXXX undertakes to file any patent application pursuant to Licensee's request, XXXX will give written notice that it is doing so to Licenseepatent. Licensee will reimburse XXXX for (****) percent ((****)%) of all costs associated with preparing, filing and maintaining such filings in the manner provided in Section 4E(i) above. XXXX will make, maintain and prosecute each and every patent application it files at Licensee's request pursuant to this Section 4E(iii) until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent in that country. (iv) Licensee will shall have the right to review and comment on any significant prosecution actions and correspondences received pertaining to the filing, prosecution and maintenance of the Licensed Patents exclusively licensed to LicenseePatents. XXXX will shall forward a copy of such actions and correspondence to Licensee within thirty (****30) days of their receipt by XXXX. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within thirty (****30) days from the date XXXX provided the copy of the action or correspondence to Licensee. If XXXX decides to abandon prosecution or maintenance of any patent or patent application under the Licensed Patents, XXXX shall provide Licensee notice of XXXX'x intent to abandon such patent or patent application in writing forty-five (45) days prior to the expiration of the deadline for abandonment. In such event, Licensee shall have the right to continue maintenance or prosecution of said patent or patent application, at its own expense, on behalf of XXXX and Licensee, to the extent allowed under applicable law.

Patent Fees and Costs. (i) Licensee NimbleGen also agrees to reimburse XXXX for (****) percent ((****)%) of all reasonable costs incurred by XXXX in associated with filing, prosecuting and maintaining the Licensed Patents in the Licensed Territory. On or before , , NimbleGen shall provide XXXX with a list of countries in which NimbleGen desires patent protection, and XXXX shall file patent applications and pursue prosecution of patents in such countries as well as the patent applications listed on in Appendix X-0, X-0 X. XXXX reserves the right to file patent applications and B-4; ((****)%) to pursue prosecution of all reasonable such patents in additional countries at its own expense. XXXX will provide NimbleGen with an invoice of the costs incurred by XXXX in filing, prosecuting and maintaining associated with the Licensed Patents listed on Appendix B-2; and a fee of (****) dollars ($(****)) for costs incurred by XXXX in filing, prosecuting and maintaining the Licensed Patents listed Territory annually beginning on Appendix B-5August 31, 2001. Licensee will be billed quarterly and will pay amounts owed NimbleGen shall reimburse XXXX within thirty (30) days of receipt the date of an invoice from XXXXsuch invoice. NimbleGen shall pay all costs incurred in such patent prosecution through the date of termination of the Agreement regardless of whether NimbleGen actually succeeds in selling a Product. (ii) XXXX will maintain has the right to control the filing, prosecution and continue to prosecute each patent application that is a Licensed Patent as maintenance of the Effective Date Licensed Patents with NimbleGen having the right to review and comment on such patent prosecution in the Licensed Territory. XXXX agrees to furnish NimbleGen with copies of any documentation to be submitted in connection with the filing or prosecution of any of the Licensed Patents reasonably in advance of such submission so as to give sufficient time for review and to incorporate reasonable modifications in such documentation proposed by NimbleGen which are not materially adverse to XXXX. XXXX also agrees to promptly furnish NimbleGen with copies of any written communications received from the authorities handling such prosecutions. XXXX will prosecute and validate all international, regional-phase and national patent applications it files, until XXXX reasonably determines that the continued prosecution is unlikely to result in the issuance of a patent in the country in which the application relevant region or country, or that continued maintenance of such patent applications, or any Licensed patent, is filed. (iii) Licensee may request, by written notice to XXXX, that XXXX file, maintain and/or prosecute foreign patent application(s) with respect to any invention subject to a Licensed Patent exclusively licensed to Licensee filed in the United Statesnot merited. Any such written notice will specify the country or countries, as may be the case, in which Licensee requests that the filing(s) are to be made, maintained and/or prosecuted by XXXX. Promptly after XXXX undertakes to file any patent application pursuant to Licensee's request, XXXX will give written notice that it is doing so to Licensee. Licensee will reimburse XXXX for (****) percent ((****)%) of all costs associated with preparing, filing and maintaining such filings in the manner provided in Section 4E(i) above. XXXX will make, maintain and prosecute each and every patent application it files at Licensee's request pursuant to this Section 4E(iii) until If XXXX determines that continued not to continue prosecution is unlikely to result in the issuance or maintenance of a patent in that country. (iv) Licensee any patent, NimbleGen will have the right to review do so at its expense, and comment on any significant prosecution actions and correspondences received pertaining to the filing, prosecution and maintenance of the Licensed Patents exclusively licensed to Licensee. XXXX will forward a copy give NimbleGen notice of such actions and correspondence determination in reasonable time to Licensee within (****) of their receipt by XXXX. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if permit NimbleGen to meet any deadline with respect to such opinions and proposals are provided to XXXX within (****) from the date XXXX provided the copy of the action prosecution or correspondence to Licenseemaintenance.