Common use of Patent Matters Clause in Contracts

Patent Matters. 9.1 BioNumerik Patent Maintenance. BioNumerik will be responsible for prosecuting, maintaining and defending the patents covered by the BioNumerik Patent Rights and BioNumerik will own all BioNumerik Patent Rights. The costs for prosecuting and maintaining such patents shall be at BioNumerik's own expense and the costs of defending such patents in the Territory will be borne [**] by BioNumerik and [**] by ASTA Medica. BioNumerik will, during the term of this Agreement, use reasonable best efforts to continue to obtain and maintain additional patent protection for the Product(s). BioNumerik will regularly advise ASTA Medica as to the progress of its patent applications and registrations in the Territory relating to the Product(s). BioNumerik will provide ASTA Medica with copies of all official actions from the patent offices in the Territory. Any reply to those office actions dealing with the scope of the claims will only be submitted by BioNumerik or its representative(s) after ASTA Medica's prior input, which input will be promptly given and will not be unreasonably withheld. ASTA Medica and BioNumerik [**] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. will develop a joint strategy as to patent strategy and prosecution in the Territory with respect to the Product(s). In addition, BioNumerik will advise ASTA Medica as to the patent strategy and prosecution outside the Territory with respect to the Product(s). BioNumerik agrees not to file patents on or make use of any Confidential Information that ASTA Medica has provided or disclosed to BioNumerik unless it has obtained the prior written consent of ASTA Medica to such filings or use. BioNumerik agrees to submit confidential pharmacological and clinical data to patent offices in the Territory when necessary for prosecution of patents by BioNumerik. 9.2 ASTA Medica Patent Maintenance and Assistance. ASTA Medica will be responsible for prosecuting, maintaining, and defending the patents covered by the ASTA Medica Patent Rights and ASTA Medica will own all ASTA Medica Patent Rights. The costs for prosecuting and maintaining such patents shall be at ASTA Medica's own expense and the costs of defending such patents in the Territory will be borne [**] by ASTA Medica and [**] by BioNumerik. ASTA Medica will regularly advise BioNumerik as to the progress of its patent applications and registrations in the Territory relating to the Product(s). ASTA Medica will provide BioNumerik with copies of all official actions from the patent offices in the Territory. Any reply to those office actions dealing with the scope of the claims will only be submitted by ASTA Medica or its representative(s) after BioNumerik's prior input, which input will be promptly given and will not be unreasonably withheld. ASTA Medica agrees not to file patents on or make use of any Confidential Information that BioNumerik has provided or disclosed to ASTA Medica unless it has obtained the prior written consent of BioNumerik to such filings or use. In addition, ASTA Medica will advise BioNumerik as to patent strategy and prosecution in the Territory with respect to the Product(s).

Patent Matters. 9.1 BioNumerik Patent Maintenance. BioNumerik will be responsible for prosecuting10.1 Licensor retains the sole right and discretion, maintaining but not obligation, to file and defending the patents covered by the BioNumerik Patent Rights and BioNumerik will own all BioNumerik Patent Rights. The costs for prosecuting and maintaining such patents shall be at BioNumerik's own expense and the costs of defending such patents in the Territory will be borne [**] by BioNumerik and [**] by ASTA Medica. BioNumerik will, during the term of this Agreement, use reasonable best efforts to continue to obtain and maintain additional patent protection for the Product(s). BioNumerik will regularly advise ASTA Medica as to the progress of its prosecute patent applications and registrations maintain patents in the Territory relating to the Product(s)Technology or any improvements made by Licensor. BioNumerik At Licensee’s request while Licensee remains an exclusive licensee hereunder, Licensor will provide ASTA Medica discuss its decisions on these matters with copies Licensee, but Licensee will not attempt to file or prosecute any such patent applications or maintain any such patent (i) except as Licensor may, at its sole discretion, approve in writing and (ii) except that Licensee may continue maintenance of licensed patents issued in the Territory if Licensor elects not to do so. Any improvements to Technology (whether or not patentable or copyrightable) that either party develops shall be owned solely by such party. Such party shall have the right, at its own expense and solely in its own name, to apply for, prosecute and defend its Proprietary Rights with respect thereto. Licensor’s existing relevant patents and patent applications in the Territory are listed on Exhibit C. Licensee agrees to place on all official Products in a proper manner all reasonable patent and patent application markings requested by Licensor. 10.2 If Licensee becomes aware of any product or activity of any third party that involves infringement or violation of any Licensor patent or other Proprietary Right in the Territory, then Licensee shall promptly notify Licensor in writing of such infringement or violation. Licensor may in its discretion take or not take whatever action it believes is appropriate; if Licensor elects to take action, Licensee will fully cooperate therewith at Licensor’s expense, including joining as a party, if necessary. If Licensor does not, within 90 days after receipt of such a notice of a patent infringement within the scope of the then remaining exclusivity of Licensee’s license hereunder, commence action directed toward restraining or enjoining such patent infringement, Licensee, so long as such exclusivity remains in effect, may take such legally permissible action as it deems necessary or appropriate to enforce Licensor’s patent rights and restrain such infringement. Licensor agrees to cooperate reasonably in any such action Licensee initiates or wishes to initiate, including, without limitation, supplying essential documentary evidence and making essential witnesses then in Licensor’s employment available. As part of such cooperation, Licensee may join or include Licensor as a party, if the need arises, although such joinder or inclusion shall be entirely at Licensee’s expense. Licensee will indemnify Licensor for any third- party damages, as well as Licensor’s expenses, costs and attorneys’ fees, in connection with Licensee’s actions from under this Section 10.2. Nothing in this Section 10.2 allows Licensee or requires Licensor to disclose Proprietary Information of Licensor. If Licensor initiates and prosecutes any such an action under this Section 10.2, all legal expense (including court costs and attorneys’ fees) shall be borne by Licensor and Licensor shall be entitled to all amounts awarded by way of judgment, settlement or compromise. Similarly, if Licensee initiates and prosecutes such an action, all legal expenses (including court costs and attorneys’ fees) shall be borne by Licensee and Licensee shall be entitled to all amounts awarded by way of judgment, settlement, or compromise. 10.3 Licensee understands that Licensor has not conducted comprehensive patent searches in all of the patent offices countries in the Territory. Any reply Licensor and Licensee agree to those office actions dealing with work cooperatively regarding issues concerning patents and Proprietary Rights and similar matters and to exercise reasonable business judgment in carrying out the scope objects of this Agreement to avoid exposing either party to liability under patent or similar laws in any of the claims will only be submitted by BioNumerik or its representative(s) after ASTA Medica's prior input, which input will be promptly given and will not be unreasonably withheld. ASTA Medica and BioNumerik [**] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. will develop a joint strategy as to patent strategy and prosecution in the Territory with respect to the Product(s). In addition, BioNumerik will advise ASTA Medica as to the patent strategy and prosecution outside the Territory with respect to the Product(s). BioNumerik agrees not to file patents on or make use of any Confidential Information that ASTA Medica has provided or disclosed to BioNumerik unless it has obtained the prior written consent of ASTA Medica to such filings or use. BioNumerik agrees to submit confidential pharmacological and clinical data to patent offices in the Territory when necessary for prosecution of patents by BioNumerik. 9.2 ASTA Medica Patent Maintenance and Assistance. ASTA Medica will be responsible for prosecuting, maintaining, and defending the patents covered by the ASTA Medica Patent Rights and ASTA Medica will own all ASTA Medica Patent Rights. The costs for prosecuting and maintaining such patents shall be at ASTA Medica's own expense and the costs of defending such patents in the Territory will be borne [**] by ASTA Medica and [**] by BioNumerik. ASTA Medica will regularly advise BioNumerik as to the progress of its patent applications and registrations in the Territory relating to the Product(s). ASTA Medica will provide BioNumerik with copies of all official actions from the patent offices countries in the Territory. Any reply to those office actions dealing with the scope Each party represents and warrants that it is not aware of the claims will only be submitted by ASTA Medica infringement or its representative(s) after BioNumerik's prior input, which input will be promptly given and will potential infringement issues that have not be unreasonably withheld. ASTA Medica agrees not to file patents on or make use of any Confidential Information that BioNumerik has provided or disclosed to ASTA Medica unless it has obtained the prior written consent of BioNumerik to such filings or use. In addition, ASTA Medica will advise BioNumerik as to patent strategy and prosecution in the Territory with respect been communicated to the Product(s)other in writing before execution of this Agreement.

Patent Matters. 9.1 BioNumerik Patent Maintenance. BioNumerik will be responsible for prosecuting, maintaining and defending the patents covered by the BioNumerik Patent Rights and BioNumerik will own all BioNumerik Patent Rights. The costs for prosecuting and maintaining such patents shall be at BioNumerik's own expense and the costs of defending such patents in the Territory will be borne [**] by BioNumerik and [**] by ASTA Medica]. BioNumerik will, during the term of this Agreement, use reasonable best efforts to continue to obtain and maintain additional patent protection for the Product(s). BioNumerik will regularly advise ASTA Medica as to the progress of its patent applications and registrations in the Territory relating to the Product(s). BioNumerik will provide ASTA Medica with copies of all official actions from the patent offices in the Territory. Any reply to those office actions dealing with the scope of the claims will only be submitted by BioNumerik or its representative(s) after ASTA Medica's prior input, which input will be promptly given and will not be unreasonably withheld. ASTA Medica and BioNumerik [**] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. will develop a joint strategy as to patent strategy and prosecution in the Territory with respect to the Product(s). In addition, BioNumerik will advise ASTA Medica as to the patent strategy and prosecution outside the Territory with respect to the Product(s). BioNumerik agrees not to file patents on or make use of any Confidential Information that ASTA Medica has provided or disclosed to BioNumerik unless it has obtained the prior written consent of ASTA Medica to such filings or use. BioNumerik agrees to submit confidential pharmacological and clinical data to patent offices in the Territory when necessary for prosecution of patents by BioNumerik. 9.2 ASTA Medica Patent Maintenance and Assistance. ASTA Medica will be responsible for prosecuting, maintaining, and defending the patents covered by the ASTA Medica Patent Rights and ASTA Medica will own all ASTA Medica Patent Rights. The costs for prosecuting and maintaining such patents shall be at ASTA Medica's own expense and the costs of defending such patents in the Territory will be borne [**] by ASTA Medica and [**] by BioNumerik]. ASTA Medica will regularly advise BioNumerik as to the progress of its patent applications and registrations in the Territory relating to the Product(s). ASTA Medica will provide BioNumerik with copies of all official actions from the patent offices in the Territory. Any reply to those office actions dealing with the scope of the claims will only be submitted by ASTA Medica or its representative(s) after BioNumerik's prior input, which input will be promptly given and will not be unreasonably withheld. ASTA Medica agrees not to file patents on or make use of any Confidential Information that BioNumerik has provided or disclosed to ASTA Medica unless it has obtained the prior written consent of BioNumerik to such filings or use. In addition, ASTA Medica will advise BioNumerik as to patent strategy and prosecution in the Territory with respect to the Product(s).

Patent Matters. 9.1 BioNumerik Patent Maintenance. BioNumerik will be responsible for prosecuting10.1 Licensor retains the sole right and discretion, maintaining but not obligation, to file and defending the patents covered by the BioNumerik Patent Rights and BioNumerik will own all BioNumerik Patent Rights. The costs for prosecuting and maintaining such patents shall be at BioNumerik's own expense and the costs of defending such patents in the Territory will be borne [**] by BioNumerik and [**] by ASTA Medica. BioNumerik will, during the term of this Agreement, use reasonable best efforts to continue to obtain and maintain additional patent protection for the Product(s). BioNumerik will regularly advise ASTA Medica as to the progress of its prosecute patent applications and registrations maintain patents in the Territory relating to the Product(s)Technology or any improvements made by Licensor. BioNumerik At Licensee’s request while Licensee remains an exclusive licensee hereunder, Licensor will provide ASTA Medica discuss its decisions on these matters with copies Licensee, but Licensee will not attempt to file or prosecute any such patent applications or maintain any such patent (i) except as Licensor may, at its sole discretion, approve in writing and (ii) except that Licensee may continue maintenance of licensed patents issued in the Territory if Licensor elects not to do so. Any improvements to Technology (whether or not patentable or copyrightable) that either party develops shall be owned solely by such party. Such party shall have the right, at its own expense and solely in its own name, to apply for, prosecute and defend its Proprietary Rights with respect thereto. Licensor’s existing relevant patents and patent applications in the Territory are listed on Exhibit C. Licensee agrees to place on all official Products in a proper manner all reasonable patent and patent application markings requested by Licensor. 10.2 If Licensee becomes aware of any product or activity of any third party that involves infringement or violation of any Licensor patent or other Proprietary Right in the Territory, then Licensee shall promptly notify Licensor in writing of such infringement or violation. Licensor may in its discretion take or not take whatever action it believes is appropriate; if Licensor elects to take action, Licensee will fully cooperate therewith at Licensor’s expense, including joining as a party, if necessary. If Licensor does not, within 90 days after receipt of such a notice of a patent infringement within the scope of the then remaining exclusivity of Licensee’s license hereunder, commence action directed toward restraining or enjoining such patent infringement, Licensee, so long as such exclusivity remains in effect, may take such legally permissible action as it deems necessary or appropriate to enforce Licensor’s patent rights and restrain such infringement. Licensor agrees to cooperate reasonably in any such action Licensee initiates or wishes to initiate, including, without limitation, supplying essential documentary evidence and making essential witnesses then in Licensor’s employment available. As part of such cooperation, Licensee may join or include Licensor as a party, if the need arises, although such joinder or inclusion shall be entirely at Licensee’s expense. Licensee will indemnify Licensor for any third-party damages, as well as Licensor’s expenses, costs and attorneys’ fees, in connection with Licensee’s actions from under this Section 10.2. Nothing in this Section 10.2 allows Licensee or requires Licensor to disclose Proprietary Information of Licensor. If Licensor initiates and prosecutes any such an action under this Section 10.2, all legal expense (including court costs and attorneys’ fees) shall be borne by Licensor and Licensor shall be entitled to all amounts awarded by way of judgment, settlement or compromise. Similarly, if Licensee initiates and prosecutes such an action, all legal expenses (including court costs and attorneys’ fees) shall be borne by Licensee and Licensee shall be entitled to all amounts awarded by way of judgment, settlement, or compromise. 10.3 Licensee understands that Licensor has not conducted comprehensive patent searches in all of the patent offices countries in the Territory. Any reply Licensor and Licensee agree to those office actions dealing with work cooperatively regarding issues concerning patents and Proprietary Rights and similar matters and to exercise reasonable business judgment in carrying out the scope objects of this Agreement to avoid exposing either party to liability under patent or similar laws in any of the claims will only be submitted by BioNumerik or its representative(s) after ASTA Medica's prior input, which input will be promptly given and will not be unreasonably withheld. ASTA Medica and BioNumerik [**] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS. will develop a joint strategy as to patent strategy and prosecution in the Territory with respect to the Product(s). In addition, BioNumerik will advise ASTA Medica as to the patent strategy and prosecution outside the Territory with respect to the Product(s). BioNumerik agrees not to file patents on or make use of any Confidential Information that ASTA Medica has provided or disclosed to BioNumerik unless it has obtained the prior written consent of ASTA Medica to such filings or use. BioNumerik agrees to submit confidential pharmacological and clinical data to patent offices in the Territory when necessary for prosecution of patents by BioNumerik. 9.2 ASTA Medica Patent Maintenance and Assistance. ASTA Medica will be responsible for prosecuting, maintaining, and defending the patents covered by the ASTA Medica Patent Rights and ASTA Medica will own all ASTA Medica Patent Rights. The costs for prosecuting and maintaining such patents shall be at ASTA Medica's own expense and the costs of defending such patents in the Territory will be borne [**] by ASTA Medica and [**] by BioNumerik. ASTA Medica will regularly advise BioNumerik as to the progress of its patent applications and registrations in the Territory relating to the Product(s). ASTA Medica will provide BioNumerik with copies of all official actions from the patent offices countries in the Territory. Any reply to those office actions dealing with the scope Each party represents and warrants that it is not aware of the claims will only be submitted by ASTA Medica infringement or its representative(s) after BioNumerik's prior input, which input will be promptly given and will potential infringement issues that have not be unreasonably withheld. ASTA Medica agrees not to file patents on or make use of any Confidential Information that BioNumerik has provided or disclosed to ASTA Medica unless it has obtained the prior written consent of BioNumerik to such filings or use. In addition, ASTA Medica will advise BioNumerik as to patent strategy and prosecution in the Territory with respect been communicated to the Product(s)other in writing before execution of this Agreement.