Common use of Patent Filing Prosecution and Maintenance Clause in Contracts

Patent Filing Prosecution and Maintenance. 8.1 The Regents shall file, prosecute and maintain the patents and applications comprising Regents' Patent Rights. Such patents shall be held in the name of The Regents and shall be obtained with counsel of The Regents' choice. The Regents shall provide IntraBiotics with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application under Regents' Patent Rights. The Regents will give due consideration to any comments or suggestions by IntraBiotics related to patent prosecution, and The Regents will not unreasonably deny a request by IntraBiotics to change patent counsel. The Regents shall be able to take action to preserve rights and minimize costs whether or not IntraBiotics has commented. 8.2 All reasonable costs incurred beginning on [ * ] and during the term of this Agreement in the preparation, filing, prosecution and maintenance of patent applications and patents in Regents' Patent Rights shall be borne by IntraBiotics. 8.3 IntraBiotics shall have the right to request patent protection on the Inventions in foreign countries if available and if it so desires. IntraBiotics must notify The Regents within [ * ] of the filing of the corresponding United States application of its decision to obtain foreign patents. This notice concerning foreign filing shall be in writing, must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite the costs thereof. The absence of such a notice from IntraBiotics to The Regents shall be considered an election not to secure foreign rights. 8.4 If IntraBiotics elects not to secure foreign patent rights, The Regents shall have the right to file patent applications at its own expense in any country in which IntraBiotics has not elected to secure patent rights, and such applications and resultant patents shall not be subject to this Agreement.

Patent Filing Prosecution and Maintenance. 8.1 7.1 As long as Licensee is current in reimbursing patent prosecution costs, The Regents shall will file, prosecute and maintain the patents and applications comprising Regents' ’ Patent Rights. Such These patents shall will be held in the name of The Regents and shall will be obtained with counsel of The Regents' ’ choice. The Regents shall must provide IntraBiotics Licensee with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application under Regents' ’ Patent Rights. The Regents will give due consideration to consider any comments or suggestions by IntraBiotics related to patent prosecution, and The Regents will not unreasonably deny a request by IntraBiotics to change patent counselLicensee. The Regents shall be able is entitled to take action to preserve rights and or minimize costs whether or not IntraBiotics Licensee has commented. 8.2 All reasonable 7.2 Licensee will bear all costs incurred beginning on [ * ] prior to and during the term of this Agreement in the preparation, filing, prosecution and maintenance of patent applications and patents in Regents' ’ Patent Rights shall be borne by IntraBioticsRights. Prosecution includes interferences, oppositions and any other inter partes matters originating in a patent office. Licensee must send payment to The Regents within 30 days of Licensee’s receipt of an invoice. 8.3 IntraBiotics shall have 7.3 Licensee has the right to request patent protection on the Inventions Invention in foreign countries if available and if it so desiresthe rights are available. IntraBiotics Licensee must notify The Regents of its decision within [ * ] eight months of the filing of the corresponding United States application of its decision to obtain foreign patentspatent application. This notice concerning foreign filing shall must be in writing, writing and must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite the costs thereof. The absence of such a this notice from IntraBiotics Licensee to The Regents shall will be considered an election not to secure foreign rights. 8.4 If IntraBiotics elects 7.4 Eight months after the filing of the corresponding United States application, but not to secure foreign patent rightssooner, The Regents shall will have the right to file patent applications at its own expense in any country in which IntraBiotics Licensee has not elected to secure patent rights, and such identified in written notice provided by 7.3. These applications and resultant resulting patents shall will not be subject to this Agreement. 7.5 Licensee’s obligation to underwrite and to pay all United States and foreign patent costs will continue for as long as this Agreement remains in effect. Licensee may terminate its obligations with respect to any given patent application or patent upon three months written notice to The Regents. The Regents will use its best efforts to curtail patent costs chargeable to Licensee under this Agreement after this notice is received from Licensee. The Regents may continue prosecution or maintenance of these application(s) or patent(s) at its sole discretion and expense, and Licensee will have no further rights or licenses to them. 7.6 The Regents will use its best efforts to not allow any Regents’ Patent Rights for which Licensee is licensed and is underwriting the costs of to lapse or become abandoned without Licensee’s authorization or reasonable notice, except for the filing of continuations, divisionals, or the like which substitute for the lapsed application.

Patent Filing Prosecution and Maintenance. 8.1 The Regents During the Term with respect to any Patent Rights arising hereunder: Access shall filebear the cost associated with the filing, prosecute prosecution, issuance and maintain the patents maintenance of all Program Patent Rights relating to Nutrigenomics Consumables and applications comprising Regents' Dermagenomics Consumables and shall control prosecution of all such Program Patent Rights, including, but not limited to, having the right to choose the patent attorney(s) or agent(s) who will prosecute the applications, having the right to inspect, review and provide substantive comments to all correspondence with any patent office or patent agent, and having the right to select the countries in which or treaties under which the patent applications will be filed. Such patents IG shall be held in bear the name cost associated with the filing, prosecution, issuance and maintenance of The Regents all Program Patent Rights relating to Nutrigenomics Tests and Dermagenomics Tests and shall control prosecution of all such Program Patent Rights, including, but not limited to, having the right to choose the patent attorney(s) or agent(s) who will prosecute the applications, having the right to inspect, review and provide substantive comments to all correspondence with any patent office or patent agent, and having the right to select the countries in which or treaties under which the patent applications will be obtained with counsel of The Regents' choicefiled. The Regents Parties shall provide IntraBiotics jointly bear the cost associated with copies of each patent applicationthe filing, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application under Regents' Patent Rights. The Regents will give due consideration to any comments or suggestions by IntraBiotics related to patent prosecution, issuance and The Regents will not unreasonably deny a request by IntraBiotics maintenance of all Program Patent Rights relating to change patent counsel. The Regents shall be able to take action to preserve rights and minimize costs whether or not IntraBiotics has commented. 8.2 All reasonable costs incurred beginning on [ * ] Tests and during shall jointly control prosecution of all such Program Patent Rights, including, but not limited to, having the term of this Agreement right to choose the patent attorney(s) or agent(s) who will prosecute the applications, having the right to inspect, review and provide substantive comments to all correspondence with any patent office or patent agent, and having the right to select the countries in which or treaties under which the preparation, filing, prosecution and patent applications will be filed. In the event that the parties cannot agree on the filing and/or maintenance of patent applications and patents in Regents' Program Patent Rights shall be borne by IntraBiotics. 8.3 IntraBiotics hereunder, then each party shall have the right to request patent protection on the Inventions in foreign countries if available and if it so desires. IntraBiotics must notify The Regents within [ * ] of the filing of the corresponding United States application of its decision to obtain foreign patents. This notice concerning foreign filing shall be in writing, must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite the costs thereof. The absence of such a notice from IntraBiotics to The Regents shall be considered an election not to secure foreign rights. 8.4 If IntraBiotics elects not to secure foreign patent rights, The Regents shall have the right to file patent applications proceed at its own expense costs with such filing and/or maintenance. If one party proceeds in filing CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ASTERISKS DENOTE OMISSIONS. and/or maintaining Program Patent Rights hereunder, then the other party agrees to assign or otherwise take any country action necessary to assist the cost-bearing party in which IntraBiotics has not elected to secure patent rights, and achieving the filing or maintenance of such applications and resultant patents shall not be subject to this AgreementProgram Patent Rights.

Patent Filing Prosecution and Maintenance. 8.1 7.1 As long as Licensee is paying prosecution costs, The Regents shall will file, prosecute and maintain the patents and applications comprising Regents' Patent Rights. Such These patents shall will be held in the name of The Regents and shall will be obtained with counsel of The Regents' choice. The Regents shall must provide IntraBiotics Licensee with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application under Regents' Patent Rights. The Regents will give due consideration to consider any comments or suggestions by IntraBiotics related to patent prosecution, and Licensee: The Regents will not unreasonably deny a request by IntraBiotics to change patent counsel. The Regents shall be able is entitled to take action to preserve rights and minimize costs whether or not IntraBiotics Licensee has commented. 8.2 All reasonable 7.2 Licensee will bear all costs incurred beginning on [ * ] prior to and during the term of this Agreement in the preparation, filing, prosecution and maintenance of patent applications and patents in Regents' Patent Rights shall be borne by IntraBioticsRights. Prosecution includes interferences, oppositions and any other inter parties matters originating in a patent office. Licensee must send payment to The Regents within 30 days of Licensee's receipt of an invoice. 8.3 IntraBiotics shall have 7.3 Licensee has the right to request patent protection on the Inventions Invention in foreign countries if available and if it so desiresthe rights are available. IntraBiotics Licensee must notify The Regents of its decision within [ * ] eight months of the filing of the corresponding United States application of its decision to obtain foreign patentspatent application. This notice concerning foreign filing shall must be in writing, writing and must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite the costs thereof. The absence of such a this notice from IntraBiotics Licensee to The Regents shall will be considered an election not to secure foreign rights. 8.4 If IntraBiotics elects 7.4 Eight months after the filing of the corresponding United States application, but not to secure foreign patent rightssooner, The Regents shall will have the right to file patent applications at its own expense in any country in which IntraBiotics Licensee has not elected to secure patent rights, and such identified in written notice provided by 7.3. These applications and resultant resulting patents shall will not be subject to this Agreement. 7.5 Licensee's obligation to underwrite and to pay all United States and foreign patent costs will continue for as long as this Agreement remains in effect. Licensee may terminate its obligations with respect to any given patent application or patent upon three months written notice to The Regents. The Regents will use its best efforts to curtail patent costs chargeable to Licensee under this Agreement after this notice is received from Licensee. The Regents may continue prosecution or maintenance of these application(s) or patent(s) at its sole discretion and expense, and Licensee will have no further rights or licenses to them. 7.6 The Regents will use its best efforts to not allow any Regents' Patent Rights for which Licensee is licensed and is underwriting the costs of to lapse or become abandoned without Licensee's authorization or reasonable notice, except for the filing of continuations, divisionals, or the like which substitute for the lapsed application.

Patent Filing Prosecution and Maintenance. 8.1 7.1 As long as Licensee is paying prosecution costs, The Regents shall will file, prosecute and maintain the patents and applications comprising Regents' ’ Patent Rights. Such These patents shall will be held in the name of The Regents and shall will be obtained with counsel of The Regents' ’ choice (in which choice, however, Licensee’s input will be considered). The Regents shall must provide IntraBiotics Licensee with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application under Regents' ’ Patent Rights. The Regents will give due consideration instruct its counsel to provide such documentation to Licensee at the same time that it is provided to The Regents, so as to afford an opportunity for Licensee and its counsel to have input with respect to the patent prosecution process. The Regents will consider any comments or suggestions by IntraBiotics related to patent prosecution, and The Regents will not unreasonably deny a request by IntraBiotics to change patent counselLicensee. The Regents shall be able is entitled to take action to preserve rights (and, unless Licensee is paying costs and requests otherwise, minimize costs costs) whether or not IntraBiotics Licensee has commented. 8.2 All reasonable 7.2 Licensee will bear all costs incurred beginning on [ * ] prior to and during the term of this Agreement in the preparation, filing, prosecution and maintenance of patent applications and patents in Regents' ’ Patent Rights shall be borne by IntraBioticsRights. Prosecution includes interferences, oppositions, and any other inter partes matters originating in a patent office. Licensee must send payment to The Regents within 30 days of Licensee’s receipt of an invoice. 8.3 IntraBiotics shall have 7.3 Licensee has the right to request patent protection prosecution on the Inventions Invention in foreign countries if available and if it so desiresthe rights are available. IntraBiotics Licensee must notify The Regents within [ * ] of the filing of the corresponding United States application of its decision no later than three months prior to obtain foreign patentsthe Chapter Two Demand and no later than three (3) months prior to the National Phase filing date indicating which territories they wish to select for prosecution. This notice concerning foreign filing shall must be in writing, writing and must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite . With the costs thereofnotice of election the Licensee must pay in advance The Regents patent counsel’s estimated cost of the Chapter Two Demand or the entry into National Phase in the requested territories. The absence of such a this notice and advance payment either for Chapter Two or for National Phase from IntraBiotics Licensee to The Regents shall will be considered an election not to secure the foreign rightsrights associated with the specific phase of patent prosecution. The Regents will instruct their counsel to send copies of notices regarding deadlines to Licensee, and to provide estimates of the related cost. 8.4 If IntraBiotics elects 7.4 Three (3) months before the Chapter Two Demand and three (3) months before National Phase filing, but not to secure foreign patent rightssooner, The Regents shall will have the right to file patent applications at its own expense in any country in which IntraBiotics Licensee has not elected to secure patent rights, and such identified in written notice provided by 7.3. These applications and resultant resulting patents shall will not be part of Regents Patent Rights and therefore not subject to this Agreement.

Patent Filing Prosecution and Maintenance. 8.1 7.1 As long as Licensee is paying prosecution costs, The Regents shall will diligently file, prosecute and maintain the patents and applications comprising Regents' ’ Patent Rights. Such These patents shall will be held in the name of The Regents and shall will be obtained with counsel of representing The Regents' choice, which counsel will be selected by the Licensee subject to The Regents’ reasonable approval (and The Regents acknowledge approval of Pxxx Xx, currently with the law firm of Squire, Sxxxxxx & Dxxxxxx). The Regents shall must provide IntraBiotics Licensee with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application under Regents' ’ Patent Rights. The Regents will give due consideration communicate and work together with Licensee to any comments or suggestions by IntraBiotics related provide direction to patent prosecutioncounsel but final decisions regarding prosecution are The Regents; provided that The Regents will consult with Licensee regarding patent prosecution decisions, and The Regents will not unreasonably deny a request use best efforts to consider the business interests expressed by IntraBiotics Licensee in prosecution of the Regents’ Patent Rights, to change patent counselthe extent no conflict exists with the legitimate requirements of The Regents. The Regents shall be able is entitled to take action to preserve rights and minimize costs whether or not IntraBiotics Licensee has commented. 8.2 All reasonable 7.2 Licensee will bear all costs incurred beginning on [ * ] prior to and during the term of this Agreement in the preparation, filing, prosecution and maintenance of patent applications and patents in Regents' ’ Patent Rights shall be borne as follows: (a) Licensee will reimburse The Regents for all patent costs incurred by IntraBioticsand invoiced to The Regents prior to March 1, 2005 (up to a maximum of fifty thousand dollars ($50,000)) within thirty (30) days after the closing of the Series A Financing or satisfying the diligence requirement in Paragraph 6.3(d) above: (b) Licensee will pay all patent costs incurred by and invoiced to The Regents after March 1, 2005 and prior to July 1, 2005, as such costs occur, but may defer payment of fifty percent (50%) of those costs until March 31, 2006 and (c) Licensee will pay all patent costs incurred by and invoiced to The Regents after July 1, 2005, as such costs occur. Prosecution includes interferences, oppositions and any other inter partes matters originating in a patent office. Licensee must send payment to The Regents within thirty (30) days of Licensee’s receipt of an invoice. 8.3 IntraBiotics shall have 7.3 Licensee has the right to request patent protection on the Inventions Invention in foreign countries if available and if it so desiresthe rights are available. IntraBiotics Licensee must notify The Regents of its decision within [ * ] eight (8) months of the filing of the corresponding United States application of its decision to obtain foreign patentspatent application. This notice concerning foreign filing shall must be in writing, writing and must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite the costs thereof. The absence of such a this notice from IntraBiotics Licensee to The Regents shall will be considered an election not to secure foreign rights. 8.4 If IntraBiotics elects 7.4 Eight (8) months after the filing of the corresponding United States application, but not to secure foreign patent rightssooner, The Regents shall will have the right to file patent applications at its own expense in any country in which IntraBiotics Licensee has not elected to secure patent rights, and such identified in written notice provided by Paragraph 7.3. These applications and resultant resulting patents shall will not be subject to this Agreement. 7.5 Licensee’s obligation to underwrite and to pay all United States and foreign patent costs will continue for as long as this Agreement remains in effect. Licensee may terminate its obligations with respect to any given patent application or patent upon three (3) months written notice to The Regents. The Regents will use its best efforts to curtail patent costs chargeable to Licensee under this Agreement after this notice is received from Licensee. The Regents may continue prosecution or maintenance of these application(s) or patent(s) at its sole discretion and expense, and Licensee will have no further rights or licenses to them. 7.6 The Regents will use its best efforts to not allow any Regents’ Patent Rights for which Licensee is licensed and is underwriting the costs of to lapse or become abandoned without Licensee’s authorization or reasonable notice, except for the filing of continuations, divisionals, or the like which substitute for the lapsed application.

Patent Filing Prosecution and Maintenance. 8.1 7.1 The Regents shall will file, prosecute and maintain the patents and applications comprising Regents' ’ Patent Rights. Such These patents shall will be held in the name of The Regents and shall will be obtained with counsel of The Regents' ’ choice. The Regents shall must provide IntraBiotics Licensee with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application under Regents' ’ Patent Rights. The Regents will give due consideration to consider any comments or suggestions by IntraBiotics related to patent prosecution, and The Regents will not unreasonably deny a request by IntraBiotics to change patent counselLicensee. The Regents shall be able is entitled to take action to preserve rights and minimize costs whether or not IntraBiotics Licensee has commented. 8.2 All reasonable 7.2 Licensee will bear all costs incurred beginning on [ * ] prior to and during the term of this Agreement in the preparation, filing, prosecution and maintenance of patent applications and patents in Regents' ’ Patent Rights shall be borne by IntraBioticsRights. Licensee must send payment to The Regents within 30 days of Licensee’s receipt of an invoice. 8.3 IntraBiotics shall have 7.3 Licensee has the right to request patent protection on the Inventions Invention in foreign countries if available and if it so desiresthe rights are available. IntraBiotics Licensee must notify The Regents of its decision within [ * ] eight months of the filing of the corresponding United States application of its decision to obtain foreign patentspatent application. This notice concerning foreign filing shall must be in writing, writing and must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite the costs thereof. The absence of such a this notice from IntraBiotics Licensee to The Regents shall will be considered an election not to secure foreign rights. 8.4 If IntraBiotics elects 7.4 Eight months after the filing of the corresponding United States application, but not to secure foreign patent rightssooner, The Regents shall will have the right to file patent applications at its own expense in any country in which IntraBiotics Licensee has not elected to secure patent rights, and such identified in written notice provided by 7.3. These applications and resultant resulting patents shall will not be subject to this Agreement. 7.5 Licensee’s obligation to underwrite and to pay all United States and foreign patent costs will continue for as long as this Agreement remains in effect. Licensee may terminate its obligations with respect to any given patent application or patent upon three months written notice to The Regents. The Regents will use its best efforts to curtail patent costs chargeable to Licensee under this Agreement after this notice is received from Licensee. The Regents may continue prosecution or maintenance of these application(s) or patent(s) at its sole discretion and expense, and Licensee will have no further rights or licenses to them. 7.6 The Regents will use its best efforts to not allow any Regents’ Patent Rights for which Licensee is licensed and is underwriting the costs of to lapse or become abandoned without Licensee’s authorization or reasonable notice, except for the filing of continuations, divisionals, or the like substitute for the lapsed application.

Patent Filing Prosecution and Maintenance. 8.1 The Regents 7.1 Licensee shall file, prosecute prosecute, and maintain patent application(s) relating to the patents Licensed Patent Rights and shall promptly provide to PHS all serial numbers and filing dates, together with copies of all these applications, including copies of all Patent Office actions, responses, and all other Patent Office communications. In addition, Licensee shall file with Patent Offices a Power of Attorney that names both Licensee and PHS or names inventors of the Licensed Patent Rights who are obligated to assign to Licensee or PHS. This Power of Attorney shall be filed with every Patent Office involved in prosecuting all patent applications comprising Regents' pertaining to Licensed Patent Rights. Such Licensee shall consult with PHS, when so requested, prior to communicating with any Patent Office with respect to the Licensed Patent Rights. PHS shall timely provide to Licensee or its attorneys any formal document necessary to file, prosecute, and maintain patents and patent applications relating to the Licensed Patent Rights. 7.2 Licensee shall make an election with respect to foreign filing, upon consultation with PHS, including which countries foreign filing shall be held done prior to the election, within eight (8) months of any United States filing. If any foreign patent applications are filed, Licensee shall promptly provide to PHS all serial numbers and filing dates. Licensee also shall provide PHS copies of foreign patent applications and Patent Office actions. Licensee shall consult with PHS, when so requested, prior to communication with any Patent Office with respect to the Licensed Patent Rights. 7.3 Licensee shall promptly record available Assignments of domestic Licensed Patent Rights in the name of The Regents United States Patent and Trademark Office and shall be obtained promptly provide PHS with counsel the original of The Regents' choiceeach recorded Assignment with respect to PHS. 7.4 Notwithstanding any other provision of this Agreement, Licensee shall not abandon the prosecution of any patent application, including provisional patent applications (except for purposes of filing continuation application(s)) or the maintenance of any patent contemplated by this Agreement, without prior written notice to PHS. The Regents Upon receiving the written notice, PHS may, at its sole option, take over the prosecution of any patent application, or the maintenance of any patent. Licensee agrees to furnish written notice to PHS as soon as possible after Licensee’s decision to abandon prosecution, and Licensee will not abandon prosecution within thirty (30) days of a prosecution deadline. Licensee shall promptly provide IntraBiotics PHS with copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination all issued patents under this Agreement. 7.5 Licensee shall promptly provide PHS with copies of all issued patents under this Agreement. 7.6 In the event that Licensee anticipates the possibility of any patent or patent application under Regents' Patent Rights. The Regents will give due consideration to any comments or suggestions by IntraBiotics related to patent prosecution, and The Regents will not unreasonably deny a request by IntraBiotics to change patent counsel. The Regents shall be able to take action to preserve rights and minimize costs whether or not IntraBiotics has commented. 8.2 All reasonable costs incurred beginning on [ * ] and during the term of this Agreement in extraordinary expenditures arising from the preparation, filing, prosecution and maintenance prosecution, licensing, or defense of any patent applications and patents in Regents' Patent Rights shall be borne application or patent contemplated by IntraBiotics. 8.3 IntraBiotics shall have the right to request patent protection on the Inventions in foreign countries if available and if it so desires. IntraBiotics must notify The Regents within [ * ] of the filing of the corresponding United States application of its decision to obtain foreign patents. This notice concerning foreign filing shall be in writing, must identify the countries desired, and reaffirm IntraBiotics' obligation to underwrite the costs thereof. The absence of such a notice from IntraBiotics to The Regents shall be considered an election not to secure foreign rights. 8.4 If IntraBiotics elects not to secure foreign patent rights, The Regents shall have the right to file patent applications at its own expense in any country in which IntraBiotics has not elected to secure patent rights, and such applications and resultant patents shall not be subject to this Agreement, including, without limitation, interferences, reexaminations, reissues and oppositions, Licensee shall provide PHS with all relevant information.