Common use of Patent Maintenance and Reimbursement Clause in Contracts

Patent Maintenance and Reimbursement. DREXEL retains control over the prosecution and maintenance of Patent Rights. Notwithstanding the foregoing, DREXEL shall obtain LICENSEE’s consent prior to filing any additional patent application(s) in any country not identified on Attachment 1. LICENSEE shall reimburse DREXEL for all reasonable documented attorneys fees, expenses, official fees and other charges incident to the preparation, prosecution and maintenance of Patent Rights within thirty (30) days after LICENSEE’s receipt from time to time of invoices for such fees, expenses and charges. DREXEL shall seek reasonable claims to protect the Patent Rights consistent with DREXEL’s overall patent strategy. DREXEL’s patent counsel shall keep LICENSEE advised as to the status of the Patent Rights by providing LICENSEE, in a timely manner at least thirty (30) days prior to their due date, with copies of all official documents and correspondence relating to the filing, prosecution, maintenance, and validity of the Patent Rights. LICENSEE shall have fifteen (15) calendar days to review and comment on patent-related documents prior to the filing of such documents and correspondence. DREXEL shall not abandon prosecution of any patent application or maintenance of any patent with the Patent Rights without first notifying LICENSEE sixty (60) days prior to any bar date, of DREXEL’s intention and reasons therefore, and providing LICENSEE with reasonable opportunity to assume responsibility for prosecution and maintenance of such patents and patent applications. However, with respect to the issued patents, DREXEL’S patent counsel will send invoices directly to LICENSEE for patent fees and taxes related to maintenance of such patents, with copies to DREXEL, at least 60 days prior to a deadline. LICENSEE shall pay such invoices directly to such patent counsel at least 30 days prior to the deadline, with a copy of correspondence and payment to DREXEL.

Patent Maintenance and Reimbursement. DREXEL retains control over 6.1 Subject to this Article 6, PENN controls the prosecution and maintenance of Patent RightsPENN PATENT RIGHTS. Notwithstanding the foregoing, DREXEL shall obtain LICENSEE’s consent prior to filing any additional patent application(s) in any country not identified on Attachment 1. LICENSEE shall COMPANY must reimburse DREXEL PENN for all reasonable documented attorneys fees, expenses, official fees and other charges incurred on or after the Execution of this Agreement and incident to the preparation, prosecution maintenance and maintenance licensing of Patent Rights PENN PATENT RIGHTS. Reimbursements shall be paid within thirty (30) days after LICENSEE’s COMPANY’S receipt from time to time of invoices for such fees, expenses and charges. DREXEL shall seek reasonable claims to protect For purposes of this Article 6, the Patent Rights consistent with DREXEL’s overall patent strategy. DREXEL’s patent counsel shall keep LICENSEE advised as to the status of the Patent Rights by providing LICENSEEword “maintenance” includes any interference negotiations, claims, or proceedings, in any forum, brought by Penn, Company, a timely manner at least thirty (30) days prior to their due datethird party, with copies of all official documents or the United States Patent and correspondence relating to the filing, prosecution, maintenanceTrademark Office, and validity of any requests by Penn or Company that the United States Patent and Trademark Office reexamine or reissue any patent in the Penn Patent Rights. LICENSEE shall have fifteen (15) calendar days Penn reserves the right to review require the Company to provide a deposit in advance of incurring out of pocket patent expenses estimated by counsel to exceed $2,500. If Company fails to reimburse patent expenses under this Paragraph 6.1, or provide a requested deposit with respect to a Penn Patent Right, then Xxxx will be free at its discretion and comment expense to either abandon such applications or patents related to such Penn Patent Right or to continue such preparation, prosecution and/or maintenance activities, and any patent rights associated with such patent action will be automatically excluded from the term “Penn Patent Rights” hereunder, on patenta patent by patent or country by country basis, as applicable. Advaxis/PENNpage 1 of 35 Amended and Restated Start-related documents Up License Agreement 6.2 At or prior to the filing Execution of such documents this Agreement, PENN will provide COMPANY a listing of monies owed for all historically accrued patent and correspondence. DREXEL shall not abandon prosecution of any patent application or maintenance of any patent with licensing expenses, attorneys fees, official fees and all other charges incident to the Patent Rights without first notifying LICENSEE sixty (60) days prior to any bar datepreparation, of DREXEL’s intention and reasons therefore, and providing LICENSEE with reasonable opportunity to assume responsibility for prosecution and maintenance of such patents the PENN PATENT RIGHTS that were incurred and patent applicationsdocketed by Xxxx on or before the Execution date (the “Historic Patent Expenses”). HoweverSuch reimbursement is currently due and owing, but the payment terms are hereby extended as follows. Effective ______________ and until paid in full, Company will pay interest at a rate equal to one and one-half percent [*] per month, or fraction thereof (or the maximum allowed by law, if less), on the unpaid balance of the Historic Patent Expenses. Payments will be applied first to accrued but unpaid interest until paid in full, with respect any remainder applied to the issued patentsoutstanding balance of Historic Patent Expenses. Upon the execution of this Agreement, DREXEL’S COMPANY shall reimburse PENN no less than [*] of the Historic Patent Expenses. COMPANY shall reimburse a minimum of [*] of the Historic Patent Expenses (and accrued interest) within ninety [*] days after execution of this Agreement, another [*] of the Historic Patent Expenses (and accrued interest) [*] after execution of this Agreement and the remaining balance of the Historic Patent Expenses (and accrued interest) paid in full within [*] days after execution of this Agreement, except that Company shall make minimum payments toward Historic Patent Expenses and accrued interest in an amount equal to a minimum of [*], upon receipt of such proceeds. Notwithstanding anything herein to the contrary, Company shall pay the entire remaining balance of Historic Patent Expenses, including accrued interest, in full on or before [*]. In the event that COMPANY fails to make timely payment, the interest on any outstanding balance shall be increased to [*] per month, calculated from the original due date, until the balance is paid in full. The parties acknowledge that the PENN PATENT RIGHTS are being prosecuted in the United States and non-US jurisdictions and that US patent counsel works with foreign correspondents in each of these jurisdictions. This routinely causes delays in receipt of invoices, over which XXXX has no control. Regardless when received by PENN and/or forwarded to and/or received by COMPANY, COMPANY will send invoices directly to LICENSEE remain liable for patent fees all fees, costs and taxes expenses related to maintenance prosecution of such patentsthe PENN PATENT RIGHTS for services performed, with copies to DREXEL, at least 60 days fees filed or incurred prior to a deadline. LICENSEE shall pay such invoices directly to such patent counsel at least 30 days prior to the deadline, with a copy termination of correspondence and payment to DREXELthis Agreement.