Common use of Patent Filing Prosecution and Maintenance Clause in Contracts

Patent Filing Prosecution and Maintenance. (a) Reasonably promptly after the Effective Date the Joint Steering Committee, in consultation with the Parties’ respective patent counsel, shall agree upon a patent filing policy with respect to Collaboration Products. In addition, from time to time, the Joint Steering Committee shall determine, in accordance with such policy, whether and in what jurisdictions patent applications should be filed with respect to any Know-How or Inventions included in the TOPOTARGET Licensed Technology, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technology, and Joint Collaboration Technology. (b) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included in the TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, TOPOTARGET, through outside patent counsel (including, without limitation, foreign patent counsel and agents) reasonably acceptable to CURAGEN and TOPOTARGET, shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter TOPOTARGET shall prosecute such application and maintain any letters patent issuing therefrom. TOPOTARGET shall take all such actions in consultation with CURAGEN and its patent counsel and shall keep CURAGEN apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(b) in the Territory shall be borne solely by TOPOTARGET. To the extent that TOPOTARGET disagrees with any such filing, prosecution or maintenance of a Patent under this Section 6.4(b) and such actions are required by the Joint Steering Committee, the associated costs and fees shall be borne solely by CURAGEN and such Patents shall be assigned to CURAGEN and shall no longer be deemed TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, as relevant, provided that, solely with respect to Patents on TOPOTARGET Collaboration Technology, such Patents shall be included within the CURAGEN Collaboration Technology for the purpose of the license granted to TOPOTARGET pursuant to Section 7.4. (c) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included in any CURAGEN Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and its patent counsel and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(c) shall be borne solely by CURAGEN. (d) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to a any Know-How or Invention included in the Joint Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto, in the Parties’ joint names, in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(d) shall be shared equally by the Parties.

Patent Filing Prosecution and Maintenance. 9.1 [The confidential material contained herein has been omitted and has been separately filed with the Commission.] shall be responsible for all costs (including attorneys' fees and expenses) incurred by it in maintaining the domestic and foreign patents, and prosecuting the domestic and foreign patent applications, specified in Exhibit A. 9.2 MOTOROLA shall provide UDC with documentation which is sufficient to allow UDC to monitor the domestic and foreign patents listed in Exhibit A for the due date for maintenance fee payments. This Section 9.2 sets forth the parties' other responsibilities for maintenance fees as follows: (a) Reasonably promptly If UDC desires maintenance fees to be paid for Licensed Patents, UDC shall give MOTOROLA written notice identifying patents for which maintenance fees will become due and requesting payment of the applicable fees (the "Maintenance Notice") at least ninety (90) days and not more than one hundred eighty (180) days before each date a maintenance fee is due for any such patent. If UDC fails give a Maintenance Notice to MOTOROLA on a timely basis as provided above after MOTOROLA has provided documentation required under this Section 9.2, MOTOROLA may in its discretion elect not to pay the Effective Date the Joint Steering Committee, in consultation with the Parties’ respective patent counsel, shall agree upon a patent filing policy with respect to Collaboration Products. In addition, from time to time, the Joint Steering Committee shall determine, in accordance with such policy, whether and in what jurisdictions patent applications should be filed with respect to maintenance fees for any Know-How or Inventions patents which would have been properly included in the TOPOTARGET Licensed Technology, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technologya timely given Maintenance Notice, and Joint Collaboration Technologyshall not be responsible to UDC or any other person if any such patents are abandoned for failure to pay the maintenance fees or otherwise. (b) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included in the TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, TOPOTARGET, through outside patent counsel (including, without limitation, foreign patent counsel and agents) reasonably acceptable to CURAGEN and TOPOTARGET, shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter TOPOTARGET shall prosecute such application and maintain any letters patent issuing therefrom. TOPOTARGET shall take all such actions in consultation with CURAGEN and its patent counsel and shall keep CURAGEN apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(b) in the Territory shall be borne solely by TOPOTARGET. To the extent that TOPOTARGET disagrees with any such filingUDC timely gives a Maintenance Notice to MOTOROLA as set forth above, prosecution MOTOROLA then has the sole discretion to determine whether or not to pay maintenance of a Patent under this Section 6.4(b) and such actions are required by the Joint Steering Committee, the associated costs and fees shall be borne solely by CURAGEN and such Patents shall be assigned to CURAGEN and shall no longer be deemed TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, as relevant, provided that, solely with respect to Patents on TOPOTARGET Collaboration Technology, such Patents shall be included within the CURAGEN Collaboration Technology for the purpose of patent(s) included in that Maintenance Notice. If MOTOROLA chooses not to pay the license granted maintenance fees for the patents included in a Maintenance Notice, MOTOROLA shall so advise UDC in writing (the "Rejection Notice") within sixty (60) days after UDC timely delivers that Maintenance Notice to TOPOTARGET pursuant to Section 7.4MOTOROLA. (c) Following a determination by the Joint Steering Committee that a patent application should be filed with respect As to any Know-How or Inventions patents included in any CURAGEN Collaboration Technologya Rejection Notice from MOTOROLA, CURAGEN UDC shall promptly file have the right, upon giving written notice thereof to MOTOROLA within thirty (30) days after MOTOROLA delivers a patent application with respect thereto Rejection Notice, to (a) pay the maintenance fees for patents included in the jurisdiction(sRejection Notice and, upon UDC's election, (b) selected by require MOTOROLA to deliver promptly to UDC a written assignment of MOTOROLA's right, title and interest in the Joint Steering Committeepatents listed in the Rejection Notice. Whether or not included as a reservation in such assignment, UDC hereby grants MOTOROLA and MOTOROLA's Affiliates, under all patents included in each such assignment of patents, an irrevocable, fully paid-up, and thereafter CURAGEN perpetual worldwide license to make, develop, use, sell, offer for sale, have sold, lease, rent, transfer, import or otherwise dispose of any products throughout the world in or outside the Field of Use, and without payment of any royalty or other sum to UDC or any duty to account therefor, and UDC agrees to comply with Section 3.2 respecting MOTOROLA's suppliers and manufacturers under such assigned patents, but the foregoing shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions be subject during the period this Agreement remains in consultation with TOPOTARGET and its patent counsel and shall keep TOPOTARGET apprised as effect to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this same limitations on MOTOROLA's reserved rights set forth in Section 6.4(c) shall be borne solely by CURAGEN3.0. (d) Following a determination by UDC shall be entitled to deduct from future royalties owing under Section 4.3 or 4.4 all maintenance fees UDC actually pays to domestic and/or foreign governmental patent offices for Licensed Patents assigned to UDC pursuant to this Section 9.2. UDC shall be entitled to the Joint Steering Committee that a deduction after furnishing certification to MOTOROLA reasonably detailing the amounts and dates of payments and to which agencies the payments were made. 9.3 As to patent application should be filed with respect applications listed in Exhibit A, MOTOROLA will use its reasonable patent prosecution judgment in determining the timing, form and substance of remaining steps required for the prosecution of such applications, and may elect to a any Know-How or Invention included cease prosecution thereof based upon factors MOTOROLA would ordinarily consider in the Joint Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto, in the Parties’ joint names, in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and shall keep TOPOTARGET apprised as to the status prosecution of all pending its other patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(d) shall be shared equally by the Parties.

Patent Filing Prosecution and Maintenance. (a) Reasonably promptly after 8.1 Title to all know-how, proprietary materials or patents claiming inventions made solely by an employee of a Party in the Effective Date course of performing the Joint Steering CommitteeDEVELOPMENT PLAN shall be owned by such Party, in consultation with subject to the Parties’ respective patent counsellicense provisions of Article 2 hereunder. Title to all know-how, proprietary materials or patents claiming inventions made jointly by employees of ILEX and JANSXXX 35 shall agree upon a patent filing policy be jointly owned by ILEX and JANSXXX, xxbject to the license provisions of Article 2 hereunder. The laws of the United States with respect to Collaboration Productsjoint ownership of inventions shall apply in all jurisdictions. In addition, from time to time, the Joint Steering Committee Each Party shall determine, in accordance with such policy, whether and in what jurisdictions be responsible for filing patent applications should be filed on inventions made solely by an employee of a Party hereof. The Parties shall mutually agree on mutually acceptable outside counsel for the filing of any jointly owned patent applications and shall equally share the expenses associated therewith. 8.2 ILEX shall ensure that all patents and patent applications owned or controlled by ILEX within the PATENT RIGHTS are diligently filed, maintained and prosecuted. Further with respect to the B.W. Co. and WFL patents and patent applications listed in Appendix D, ILEX agrees to exert reasonable efforts to ensure that such patents are diligently maintained. ILEX agrees to request from B.W. Co. and WFL, and to provide JANSXXX xxxh documentary evidence concerning the maintenance and payment of taxes on such patents. ILEX does not represent or warrant that patents on any Know-How such patent applications will be obtained and ILEX shall in its sole discretion be responsible for determining whether to abandon any or Inventions all of said patent applications. 8.3 With respect to all patents and patent applications owned or controlled by ILEX, ILEX agrees to promptly provide JANSXXX xxxh copies of: 1. All patent applications included in PATENT RIGHTS; 2. All prior art searches in its possession related to said patent applications and the TOPOTARGET Licensed Technologysubject matter of this License Agreement; and 3. All correspondence to and from the United States Patent and Trademark Office related to said patent applications as well as all requested 36 correspondence relating to corresponding national and international patent applications. 8.4 JANSXXX xxxll have the right to consult with ILEX regarding the content of said patent applications, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technologyprior art searches and correspondence, and Joint Collaboration Technologyto comment thereon. ILEX shall consider all such comments offered by JANSXXX, xx being agreed, however, that all final decisions respecting conduct of the prosecution of said patent applications shall rest solely in the discretion of ILEX. 8.5 Within nine (b9) Following months of the initial filing date of any patent application, or at least three (3) months prior to entering the national phase of any International Patent Application within the PATENT RIGHTS, ILEX shall consult with JANSXXX xxx request a determination by the Joint Steering Committee that a list of foreign countries where such patent application should shall be filed filed. ILEX shall file patent applications in those foreign countries which may be designated in writing by JANSXXX xxx JANSXXX xxxll be permitted to consult with respect to any Know-How or Inventions included ILEX in the TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, TOPOTARGET, through outside patent counsel (including, without limitation, selection of foreign patent counsel and agents) reasonably acceptable in the preparation and prosecution of said foreign patent applications. 8.6 In the event ILEX decides to CURAGEN abandon or allow to lapse any of the B.W. Co. or WFL patents or patent applications listed in Appendix D, it shall inform JANSXXX xxx JANSXXX xxxll be given the opportunity to prosecute such patent application and/or maintain such patent at its own expense and TOPOTARGETJANSXXX xxxll receive a royalty credit for any expenses associated therewith. With respect to any patents or patent applications owned or controlled by ILEX other than the B.W. Co. or WFL patents (the "ILEX patents"), ILEX shall promptly file a patent application with respect thereto notify JANSXXX xx the event ILEX decides not to file, to abandon or discontinue prosecution or maintenance of any such ILEX patents. Such notification will be given as early as possible which in the jurisdiction(sno event will be less than 37 sixty (60) selected by the Joint Steering Committee, and thereafter TOPOTARGET shall prosecute such application and maintain any letters patent issuing therefrom. TOPOTARGET shall take all such actions in consultation with CURAGEN and its patent counsel and shall keep CURAGEN apprised as days prior to the status of all pending patent applicationsdate on which said application(s) will become abandoned. The costs of filingJANSXXX xxxll have the option, prosecuting and maintaining any Patents under this Section 6.4(b) in exercisable upon written notification to ILEX, to assume full responsibility for the Territory shall be borne solely by TOPOTARGET. To the extent that TOPOTARGET disagrees with any such filing, prosecution or maintenance of a Patent under this Section 6.4(bthe affected ILEX patents or patent application(s), in which event all such affected patents or patent application(s) and such actions are required by the Joint Steering Committee, the associated costs and fees shall be borne solely promptly assigned by CURAGEN and such Patents shall be assigned ILEX to CURAGEN and shall no longer be deemed TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, as relevant, provided that, solely JANSXXX xxx all royalty obligations with respect to Patents on TOPOTARGET Collaboration Technologysaid ILEX patents or patent applications shall cease. 8.7 JANSXXX xxxll co-operate with ILEX, such Patents shall be included and ILEX agrees to diligently seek any extension under the U.S. Drug Price Competition and patent Term Restoration Act of 1984, the Supplementary Certificate of Protection of the Member States of the European Community or other similar measure in any other country that is available or that becomes available in respect of the term of any patent within the CURAGEN Collaboration Technology for the purpose of the license granted to TOPOTARGET pursuant to Section 7.4. (c) Following a determination by the Joint Steering Committee PATENT RIGHTS including any patent that may issue on a patent application should be filed with respect within the PATENT RIGHTS. JANSXXX xxxll diligently advise ILEX in a timely manner of approval by the Food and Drug Administration of the United States of America to USE, SELL or market LICENSED PRODUCTS or any other governmental approval obtained by or on behalf of JANSXXX xx an AFFILIATE that is pertinent to any Know-How such extension and JANSXXX xxxll supply ILEX with any pertinent information and data in its possession or Inventions included control or that is in the possession or control of any AFFILIATE or SUBLICENSEE and shall cooperate fully in assisting ILEX to obtain any such extension that it may seek and JANSXXX xxxll supply ILEX in a timely manner with any information and data and any supporting affidavits or documents required to comply with 35 US 156 Extension of Patent Term (and any successor legislation) and any administrative rules or regulation thereunder or required to comply with any 38 corresponding laws and regulations that are or shall be in effect in any CURAGEN Collaboration Technologycountry within the PATENT RIGHTS, CURAGEN shall promptly file a patent application all without further consideration. JANSXXX xxxll require its AFFILIATES to comply with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and its patent counsel and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(c) shall be borne solely by CURAGENArticle 8.7. (d) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to a any Know-How or Invention included in the Joint Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto, in the Parties’ joint names, in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(d) shall be shared equally by the Parties.

Patent Filing Prosecution and Maintenance. Licensed Patent Rights will be held in the name of SBP but diligently prosecuted by counsel to Cerecor (a“Patent Counsel”) Reasonably promptly after the Effective Date the Joint Steering Committeeto seek reasonably adequate protection for Products. Provided that Cerecor is current on all obligations to SBP, in consultation with the Parties’ respective patent counsel, Cerecor shall agree upon a patent filing policy control all actions and decisions with respect to Collaboration Productsthe filing, prosecution and maintenance of such Licensed Patent Rights; provided that Cerecor will consider any reasonable comments or suggestions by SBP with respect to the filing, prosecution and maintenance of such Licensed Patent Rights. Cerecor will instruct Patent Counsel to copy SBP on all correspondence related to such Licensed Patent Rights (including all copies of patent applications, office actions, draft responses to office actions, as-filed copies of responses to office actions, requests for terminal disclaimer, and requests for reissue or reexamination of any patent or patent application) and to interact with Cerecor in regards to the preparation, filing, prosecution and maintenance of such Licensed Patent Rights. Cerecor will instruct Patent Counsel to provide SBP with draft applications and responses so that SBP has reasonable time to consider the draft and provide strategy input. Cerecor has the right to take any action to preserve rights whether or not SBP has commented and will not allow any such Licensed Patent Rights to lapse or become abandoned without providing at least thirty (30) days prior written notice to SBP, except for filing of continuations, divisionals, or the like that substitute for the lapsed application. In additionthe event Cerecor wishes to abandon prosecution of any Licensed Patent Rights (including but not limited to, from time not responding to timean outstanding office action, failing to file a continuation application after allowance, or not paying a maintenance fee or annuity in any country), Cerecor shall allow SBP to take over such prosecution if Cerecor so indicates, which prosecution shall remain in the Joint Steering Committee shall determinename of SBP. Control of a given SBP Patent Right (including the right to control all actions and decisions with respect to the filing, prosecution and maintenance) will revert to SBP upon termination of this Agreement or upon any decision by Cerecor to terminate or abandon such SBP Patent Right in accordance with such policy, whether and in what jurisdictions patent applications should be filed with respect to any Know-How Section 5.2.2 or Inventions included in the TOPOTARGET Licensed Technology, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technology, and Joint Collaboration Technologyotherwise. (b) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included in the TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, TOPOTARGET, through outside patent counsel (including, without limitation, foreign patent counsel and agents) reasonably acceptable to CURAGEN and TOPOTARGET, shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter TOPOTARGET shall prosecute such application and maintain any letters patent issuing therefrom. TOPOTARGET shall take all such actions in consultation with CURAGEN and its patent counsel and shall keep CURAGEN apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(b) in the Territory shall be borne solely by TOPOTARGET. To the extent that TOPOTARGET disagrees with any such filing, prosecution or maintenance of a Patent under this Section 6.4(b) and such actions are required by the Joint Steering Committee, the associated costs and fees shall be borne solely by CURAGEN and such Patents shall be assigned to CURAGEN and shall no longer be deemed TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, as relevant, provided that, solely with respect to Patents on TOPOTARGET Collaboration Technology, such Patents shall be included within the CURAGEN Collaboration Technology for the purpose of the license granted to TOPOTARGET pursuant to Section 7.4. (c) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included in any CURAGEN Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and its patent counsel and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(c) shall be borne solely by CURAGEN. (d) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to a any Know-How or Invention included in the Joint Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto, in the Parties’ joint names, in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(d) shall be shared equally by the Parties.

Patent Filing Prosecution and Maintenance. 7.1 Except as otherwise provided in this Article 7, PHS agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to Licensee. PHS shall provide Licensee with at least fourteen (a14) Reasonably promptly after days to comment on any document that PHS intends to file or to cause to be filed with the Effective Date relevant intellectual property or patent office, unless fourteen (14) days is not available prior to the Joint Steering Committeestatutory deadline for any document that PHS intends to file or caused to be filed with the relevant intellectual property or patent office, in consultation which case PHS shall provide Licensee with as much opportunity as reasonably possible prior to the Parties’ respective patent counselstatutory deadline for Licensee to comment. PHS shall consider in good faith Licensee’s comments. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE COPY FILED HEREWITH OMITS THE INFORMATION SUBJECT TO A CONFIDENTIALITY REQUEST. OMISSIONS ARE DESIGNATED [***]. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. ***Text Omitted and Filed Separately Confidential Treatment Requested Under 17 C.F.R. §§ 200.80(b)(4) and 230.406 7.2 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, shall agree upon a patent filing policy filing, prosecution, or maintenance of the Licensed Patent Rights and provide each other with at least fourteen (14) days to provide comments and suggestions with respect to Collaboration Products. In additionthe preparation, from time filing, prosecution, and maintenance of Licensed Patent Rights, unless fourteen (14) days is not available prior to time, the Joint Steering Committee shall determinestatutory deadline of a potentially affected document, in accordance which case the Parties will provide each other with such policy, whether as much opportunity as reasonably possible to comment and in what jurisdictions patent applications should offer suggestions prior to the statutory deadline. Each party’s comments and suggestions shall be filed with respect to any Know-How or Inventions included in the TOPOTARGET Licensed Technology, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technology, and Joint Collaboration Technology. (b) Following a determination considered by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included other party in the TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, TOPOTARGET, through outside patent counsel (including, without limitation, foreign patent counsel and agents) reasonably acceptable to CURAGEN and TOPOTARGET, shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter TOPOTARGET shall prosecute such application and maintain any letters patent issuing therefrom. TOPOTARGET shall take all such actions in consultation with CURAGEN and its patent counsel and shall keep CURAGEN apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(b) in the Territory shall be borne solely by TOPOTARGET. To the extent that TOPOTARGET disagrees with any such filing, prosecution or maintenance of a Patent under this Section 6.4(b) and such actions are required by the Joint Steering Committee, the associated costs and fees shall be borne solely by CURAGEN and such Patents shall be assigned to CURAGEN and shall no longer be deemed TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, as relevant, provided that, solely with respect to Patents on TOPOTARGET Collaboration Technology, such Patents shall be included within the CURAGEN Collaboration Technology for the purpose of the license granted to TOPOTARGET pursuant to Section 7.4good faith. (c) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included in any CURAGEN Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and its patent counsel and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(c) shall be borne solely by CURAGEN. (d) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to a any Know-How or Invention included in the Joint Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto, in the Parties’ joint names, in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(d) shall be shared equally by the Parties.

Patent Filing Prosecution and Maintenance. Subject to the other terms and conditions of this Amended Agreement (a) Reasonably promptly after including the Effective Date remainder of this Section 6.2), during the Joint Steering Committeeterm of this Amended Agreement, Genentech shall be responsible for the filing, prosecution and maintenance of all Licensed Patent Rights, in consultation with VaxGen, and VaxGen agrees to reimburse all reasonable costs and expenses incurred by Genentech for the Parties’ respective benefit of VaxGen hereunder within 30 days of receipt of an invoice from Genentech setting forth such costs and expenses, including a reasonable apportionment of such costs and expenses for patent counselapplications and patents within the Licensed Patent Rights that contain claims outside of or overlapping with the scope of rights licensed to VaxGen under this Amended Agreement (hereinafter, "Broad Claims"). Genentech shall agree upon keep VaxGen informed of the status of filing, prosecution and maintenance of Licensed Patent Rights in each country in the Territory, by: (i) providing VaxGen with a copy of each patent filing policy application filed by Genentech hereunder promptly after filing; (ii) for each patent application and patent hereunder that contains Broad Claims, providing VaxGen with respect Genentech's reasonable apportionment of out-of-pocket costs and expenses to Collaboration Productsdate and on a going-forward basis therefore, which VaxGen may review with Genentech as reasonably requested; (iii) updating VaxGen on a regular basis (and in any event not less frequently than annually) regarding the status of the patent applications and patents within the Licensed Patent Rights by providing VaxGen with a then-current version of Exhibit A to this Amended Agreement and reviewing it with VaxGen as reasonably requested; and (iv) notifying VaxGen of any interference, opposition, re-examination request, nullity proceeding, appeal or other interparty action or reissuance proceeding involving the Licensed Patent Rights. In addition, from time to time, the Joint Steering Committee Genentech shall determine, determine in accordance its sole discretion. but with such policyconsultation with VaxGen as provided herein, whether and in what jurisdictions patent applications should be filed or not to file, perfect, prosecute, maintain or take or not take any other action with respect to any Know-How or Inventions included in the TOPOTARGET Licensed Technology, TOPOTARGET Collaboration Technology, CURAGEN Collaboration Technology, and Joint Collaboration Technology. (b) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to any Know-How or Inventions included patent within the Licensed Patent Rights generally or in a particular country or territory within the TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, TOPOTARGET, through outside patent counsel Territory (including, without limitation, foreign patent counsel any interference, opposition, re-examination request, nullity proceeding, appeal or other inter-party action or reissuance proceeding involving the Licensed Patent Rights). However, if Genentech desires to take (or not take) any such action but VaxGen is not prepared to reimburse Genentech therefor as required hereunder, in such case Genentech shall be free to take (or not take) such action at its sole cost and agents) reasonably acceptable expense and, on notice from Genentech to CURAGEN and TOPOTARGETVaxGen, shall promptly file a patent application with respect thereto in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter TOPOTARGET shall prosecute such application and maintain any letters patent issuing therefrom. TOPOTARGET shall take all such actions in consultation with CURAGEN and its patent counsel and shall keep CURAGEN apprised as rights licensed to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents VaxGen under this Section 6.4(b) in the Territory shall be borne solely by TOPOTARGET. To the extent that TOPOTARGET disagrees with any such filingAmended Agreement, prosecution or maintenance of a Patent under this Section 6.4(b) and such actions are required by the Joint Steering Committee, the associated costs and fees shall be borne solely by CURAGEN and such Patents shall be assigned to CURAGEN and shall no longer be deemed TOPOTARGET Licensed Technology or TOPOTARGET Collaboration Technology, as relevant, provided that, solely with respect to Patents on TOPOTARGET Collaboration Technologysuch patent application or patent shall return to Genentech and thereafter be excluded from the Licensed Patent Rights; provided, such Patents however, that VaxGen shall be included within the CURAGEN Collaboration Technology for the purpose of the license granted entitled to TOPOTARGET pursuant relicense such rights later on terms to Section 7.4. (c) Following a determination be agreed upon by the Joint Steering Committee Parties. The foregoing shall not preclude Genentech from licensing such rights to a third party in the interim; provided, however, that Genentech shall notify VaxGen if Genentech is interested in licensing such rights and VaxGen shall have a patent application should be filed right of first negotiation with respect to such rights for thirty (30) days from such notice from Genentech. Furthermore, if Genentech in its sole discretion elects not to file, perfect, prosecute, maintain or take any other action with respect to any Know-How or Inventions included in any CURAGEN Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto or patent within the Licensed Patent Rights generally or in a particular country or territory within the jurisdiction(s) selected by Territory (including, without limitation, any interference, opposition, reexamination request, nullity proceeding, appeal or other inter-party action or reissuance proceeding involving the Joint Steering CommitteeLicensed Patent Rights), VaxGen may elect to take such action at its own expense. Genentech shall provide reasonable assistance to VaxGen and thereafter CURAGEN shall prosecute execute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions necessary documents as VaxGen may request in consultation with TOPOTARGET and its patent counsel and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filingconnection therewith, prosecuting and maintaining any Patents under this Section 6.4(c) shall be borne solely by CURAGENat VaxGen's expense. (d) Following a determination by the Joint Steering Committee that a patent application should be filed with respect to a any Know-How or Invention included in the Joint Collaboration Technology, CURAGEN shall promptly file a patent application with respect thereto, in the Parties’ joint names, in the jurisdiction(s) selected by the Joint Steering Committee, and thereafter CURAGEN shall prosecute such application and maintain any letters patent issuing therefrom. CURAGEN shall take all such actions in consultation with TOPOTARGET and shall keep TOPOTARGET apprised as to the status of all pending patent applications. The costs of filing, prosecuting and maintaining any Patents under this Section 6.4(d) shall be shared equally by the Parties.