Common use of Patent Prosecution and Costs Clause in Contracts

Patent Prosecution and Costs. (i) Licensee agrees to reimburse XXXX for all of the costs incurred by XXXX in filing, prosecuting, and maintaining the Licensed Patents (“Patent Costs”), including those Patent Costs incurred prior to (“Past Patent Costs”) and after (“Future Patent Costs”) the Effective Date, within [***] days of receiving an invoice from XXXX. XXXX will issue an invoice for Past Patent Costs [***] months after execution of this Agreement (which amount is estimated to be at least $[***]) and for Future Patent Costs on a semi-annual basis as such costs are incurred. All invoices for Past Patent Costs and Future Patent Costs will contain supporting information showing reasonable, nonprivileged detail of the Patent Costs incurred and the Licensed Patents to which such Patent Costs pertain. If Licensee fails to pay any Patent Costs by the invoice due date, XXXX will have the right, at its sole discretion, to abandon and/or remove from this Agreement the applicable Licensed Patent(s). (ii) XXXX is not obligated to pursue any particular patent application or maintain any particular issued patent under the Licensed Patents. If Licensee desires XXXX to make or maintain any new patent application filing in the U.S. or a foreign country, Licensee must, at least [***] months prior to the expiration of the deadline for taking such action (without requiring extension), (1) notify XXXX in writing indicating those countries in which Licensee desires XXXX to file for or pursue patent protection; and (2) agree to timely reimburse XXXX for the Patent Costs associated therewith. Any patent application that XXXX pursues or patent it maintains at Licensee’s request and payment, that meets the criteria of a Licensed Patent, will be included under this Agreement and added to the Therapeutic Licensed CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. Patents list or Platform Licensed Patents list in Appendix B according to the categorization of the parent filing. (iii) With respect to any new filings of patent applications of the Licensed Patents which Licensee did not request XXXX to make or maintain, XXXX reserves the exclusive right to file, prosecute, maintain, reexamine, and reissue any such patent applications, at its own expense, and any resulting patent applications and patents will not be included as Licensed Patents under this Agreement. Licensee acknowledges that if the United States Government (through any of its agencies or otherwise) has funded research, during the course of or under which any of the inventions of the Licensed Patents were conceived or made, the United States Government is entitled, as a right, under the provisions of 35 U.S.C. § 200-212 and applicable regulations of Chapter 37 of the Code of Federal Regulations, to make and maintain foreign filings in those countries not selected by Licensee or XXXX. (iv) Unless Licensee is in breach of this Agreement for failure to timely reimburse XXXX for Patent Costs hereunder, XXXX will prosecute all applications it files at Licensee’s request pursuant to the terms of this Section until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent. Licensee shall have the right to review and comment on any significant prosecution actions and correspondence received from the relevant patent office pertaining to the filing, prosecution and maintenance of the Licensed Patents. XXXX shall forward a copy of such actions and correspondence to Licensee within [***] days of their receipt by XXXX, or as soon thereafter as reasonably practicable under the circumstances. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within [***] days from the date XXXX provided the copy of the action or correspondence to Licensee. If XXXX decides to abandon prosecution or maintenance of any patent or patent application under the Licensed Patents, XXXX will provide Licensee notice of XXXX’x intent to abandon such application or patent and the parties will determine in good faith how to proceed, taking into account the Patent Costs already expended; provided that so long as Licensee and it sublicensee(s) are and remain current with respect to all obligations owed to XXXX (including without limitation the payment of all Patent Costs) and not otherwise in breach of this Agreement, XXXX will not abandon the applicable patent or patent application unless the parties so agree. (v) If, upon issuance of any Licensed Patent, either party reasonably believes in good faith that the subject matter of the issued claims of such Licensed Patent warrant it being moved from the Platform Licensed Patents categorization to the Therapeutic Licensed Patents categorization (or vice versa), then such party will promptly notify the other within [***] days of being notified of the Licensed Patent’s issuance. The parties will thereafter discuss in good faith whether and how to amend this Agreement to account for such re-categorization. (vi) Licensee agrees that it shall cooperate with XXXX in good faith to extend, restore, and supplement the term of any Licensed Patent (at XXXX’x selection, in consultation with Licensee) under the Drug Price Competition and Patent Term Restoration Act of 1984, (e.g., as codified at 21 U.S.C. § 355 and 35 U.S.C. §§ 156, 271, 282; and implemented in part by 37 CFR 1.710 et seq.), and under any comparable foreign provision (e.g., Regulation (EC) No 469/2009 of the European Parliament and Article 63 of the European Patent Convention). Licensee agrees not to use any dossier, regulatory CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. authorization, or any regulatory review period it obtains or incurs as a result of seeking regulatory approval for any Product to seek any patent term extension, restoration, or supplementation for any other patent without first reaching mutual agreement with XXXX, not to be unreasonably withheld or delayed.

Patent Prosecution and Costs. During the period prior to the expiration or termination of Option Period, Seller shall continue to Prosecute and maintain and shall not abandon any of Seller’s existing Patents covering the A&P Enzymes. Without limiting the foregoing, (ia) Licensee agrees Seller shall, or shall cause the external law firm prosecuting such Patents to, consult in good faith with Buyer with respect to reimburse XXXX for all material steps to be taken in connection with such Prosecution and maintenance of such Patents (provided, however, that Seller will not be required to disclose any information to Buyer if such disclosure would be reasonably likely to result in any waiver of attorney-client privilege, work product doctrine, joint defense privilege or any other privilege and the parties agree that any disclosure of information pursuant hereto shall not constitute a waiver of any such privilege), and (b) Seller shall promptly provide Buyer with copies of any notices or correspondence received from any Governmental Authority or other Third Party regarding such Patents and consult in good faith with Buyer with respect to any written response or further action in response to such notice. Should any patent applications expire or issue as patents prior to the expiration or termination of the costs incurred by XXXX in filingOption Period, prosecuting, and maintaining the Licensed Patents (“Patent Costs”), including those Patent Costs incurred prior to (“Past Patent Costs”) and after (“Future Patent Costs”) the Effective Dateexpiration of such patent application or the issuance of such patent, Seller shall, if requested by Xxxxx, file a continuing application claiming priority to such patent to the extent such filing is allowed. Buyer shall, within [***] days after Seller’s provision of receiving an invoice from XXXX. XXXX will issue an invoice applicable invoices, reimburse Seller for Past Patent Costs [***] months after execution all reasonable and documented, out-of-pocket costs and expenses of this Agreement (which amount is estimated to be at least $[***]) Seller and for Future Patent Costs on a semi-annual basis as such costs are incurred. All invoices for Past Patent Costs and Future Patent Costs will contain supporting information showing reasonable, nonprivileged detail of its Affiliates incurred during the Patent Costs incurred and the Licensed Patents to which such Patent Costs pertain. If Licensee fails to pay any Patent Costs by the invoice due date, XXXX will have the right, at its sole discretion, to abandon and/or remove from this Agreement the applicable Licensed Patent(s). (ii) XXXX is not obligated to pursue any particular patent application or maintain any particular issued patent under the Licensed Patents. If Licensee desires XXXX to make or maintain any new patent application filing in the U.S. or a foreign country, Licensee must, at least [***] months period prior to the expiration or termination of the deadline for taking such action (without requiring extension), (1) notify XXXX in writing indicating those countries in which Licensee desires XXXX to file Option Period for or pursue patent protection; and (2) agree to timely reimburse XXXX for in connection with the Patent Costs associated therewithProsecution and maintenance activities of Seller and its Affiliates in accordance with this Section 9.04; provided that, upon Seller’s written request, Buyer shall pay directly to one or more law firms engaged by Seller or its Affiliates such costs and expenses of such Prosecution. Any patent application that XXXX pursues or patent it maintains at Licensee’s request and payment, that meets the criteria of a Licensed Patent, will be included under this Agreement and added to the Therapeutic Licensed CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. Patents list or Platform Licensed Patents list in Appendix B according to the categorization of the parent filingIS THE TYPE THAT THE REGISTRANT TREATS AS PRIVATE OR CONFIDENTIAL. (iii) With respect to any new filings of patent applications of the Licensed Patents which Licensee did not request XXXX to make or maintain, XXXX reserves the exclusive right to file, prosecute, maintain, reexamine, and reissue any such patent applications, at its own expense, and any resulting patent applications and patents will not be included as Licensed Patents under this Agreement. Licensee acknowledges that if the United States Government (through any of its agencies or otherwise) has funded research, during the course of or under which any of the inventions of the Licensed Patents were conceived or made, the United States Government is entitled, as a right, under the provisions of 35 U.S.C. § 200-212 and applicable regulations of Chapter 37 of the Code of Federal Regulations, to make and maintain foreign filings in those countries not selected by Licensee or XXXX. (iv) Unless Licensee is in breach of this Agreement for failure to timely reimburse XXXX for Patent Costs hereunder, XXXX will prosecute all applications it files at Licensee’s request pursuant to the terms of this Section until XXXX determines that continued prosecution is unlikely to result in the issuance of a patent. Licensee shall have the right to review and comment on any significant prosecution actions and correspondence received from the relevant patent office pertaining to the filing, prosecution and maintenance of the Licensed Patents. XXXX shall forward a copy of such actions and correspondence to Licensee within [***] days of their receipt by XXXX, or as soon thereafter as reasonably practicable under the circumstances. XXXX shall review and consider in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within [***] days from the date XXXX provided the copy of the action or correspondence to Licensee. If XXXX decides to abandon prosecution or maintenance of any patent or patent application under the Licensed Patents, XXXX will provide Licensee notice of XXXX’x intent to abandon such application or patent and the parties will determine in good faith how to proceed, taking into account the Patent Costs already expended; provided that so long as Licensee and it sublicensee(s) are and remain current with respect to all obligations owed to XXXX (including without limitation the payment of all Patent Costs) and not otherwise in breach of this Agreement, XXXX will not abandon the applicable patent or patent application unless the parties so agree. (v) If, upon issuance of any Licensed Patent, either party reasonably believes in good faith that the subject matter of the issued claims of such Licensed Patent warrant it being moved from the Platform Licensed Patents categorization to the Therapeutic Licensed Patents categorization (or vice versa), then such party will promptly notify the other within [***] days of being notified of the Licensed Patent’s issuance. The parties will thereafter discuss in good faith whether and how to amend this Agreement to account for such re-categorization. (vi) Licensee agrees that it shall cooperate with XXXX in good faith to extend, restore, and supplement the term of any Licensed Patent (at XXXX’x selection, in consultation with Licensee) under the Drug Price Competition and Patent Term Restoration Act of 1984, (e.g., as codified at 21 U.S.C. § 355 and 35 U.S.C. §§ 156, 271, 282; and implemented in part by 37 CFR 1.710 et seq.), and under any comparable foreign provision (e.g., Regulation (EC) No 469/2009 of the European Parliament and Article 63 of the European Patent Convention). Licensee agrees not to use any dossier, regulatory CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. authorization, or any regulatory review period it obtains or incurs as a result of seeking regulatory approval for any Product to seek any patent term extension, restoration, or supplementation for any other patent without first reaching mutual agreement with XXXX, not to be unreasonably withheld or delayed.

Patent Prosecution and Costs. (i) Licensee agrees to reimburse XXXX ARRAYJET for all pro-rated costs, equitably shared by Licensee and any other licensees of the costs Licensed Patents (in all fields of use) on a patent/patent application-by-patent/patent application basis, incurred by XXXX ARRAYJET in filing, prosecuting, prosecuting and maintaining the Licensed Patents (“Patent Costs”), including those Patent Costs incurred prior to (“Past Patent Costs”) and after (“Future Patent Costs”) the Effective Date, only where such Patent Costs are incurred by virtue of the Licensee requiring ARRAYJET to file, prosecute, or maintain the Licensed Patents in any jurisdiction within the Licensed Territory. Any Patent Costs due in accordance with this clause F(i) shall become due and payable to ARRAYJET within [***] days of receiving an invoice from XXXX. XXXX will issue an invoice for Past Patent Costs [***] months after execution of this Agreement (which amount is estimated to be at least $[***]) and for Future Patent Costs on a semi-annual basis as such costs are incurred. All invoices for Past Patent Costs and Future Patent Costs will contain supporting information showing reasonable, nonprivileged detail of the Patent Costs incurred and the Licensed Patents to which such Patent Costs pertain. If Licensee fails to pay any Patent Costs by the invoice due date, XXXX will have the right, at its sole discretion, to abandon and/or remove from this Agreement the applicable Licensed Patent(s). (ii) XXXX is not obligated to pursue any particular patent application or maintain any particular issued patent under the Licensed Patents. If Licensee desires XXXX to make or maintain any new patent application filing in the U.S. or a foreign country, Licensee must, at least [***] months prior to the expiration of the deadline for taking such action (without requiring extension), (1) notify XXXX in writing indicating those countries in which Licensee desires XXXX to file for or pursue patent protection; and (2) agree to timely reimburse XXXX for the Patent Costs associated therewithARRAYJET. Any country for which ARRAYJET files for such patent application that XXXX pursues or patent it maintains protection at Licensee’s request and payment, that meets the criteria of a Licensed Patent, will expense shall be included in the Licensed Territory under this Agreement and added to the Therapeutic Licensed CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSEDAgreement. Patents list or Platform Licensed Patents list in Appendix B according to the categorization of the parent filing. (iii) With respect to any new filings of patent applications of the Licensed Patents which Licensee did not request XXXX to make or maintain, XXXX ARRAYJET reserves the exclusive right to file, prosecute, maintain, reexamine, and reissue file a patent application (including a foreign filing or any such patent applicationscontinuing U.S. application), at its own expense, and in any resulting patent applications and patents will not be included as Licensed Patents under this Agreement. Licensee acknowledges that if the United States Government (through any of its agencies or otherwise) has funded research, during the course of or under which any of the inventions of the Licensed Patents were conceived or made, the United States Government is entitled, as a right, under the provisions of 35 U.S.C. § 200-212 and applicable regulations of Chapter 37 of the Code of Federal Regulations, to make and maintain foreign filings in those countries not selected requested by Licensee or XXXXpursuant to this clause 4F(i). (ivii) Unless Licensee is in breach of any term or condition of this Agreement (including, without limitation for failure to timely reimburse XXXX ARRAYJET for Patent Costs hereunder), XXXX ARRAYJET will prosecute all applications it files at Licensee’s reasonable request pursuant to the terms of this Section until XXXX clause 4F, and will consider any reasonable comments or suggestions by Licensee with respect thereto, unless ARRAYJET determines that continued prosecution is unlikely to result in the issuance of a patent. ARRAYJET will instruct its patent counsel to copy Licensee shall have the right to review on relevant and comment on any significant prosecution actions and applicable correspondence received from the relevant patent office pertaining related to the Licensed Patents and to interact with Licensee with respect to the preparation, filing, prosecution and maintenance of the Licensed Patents. XXXX shall forward a copy ARRAYJET will use reasonable efforts not to allow any Licensed Patents to lapse or become abandoned without Licensee’s written authorization under this Agreement, except for filing of such actions and correspondence to Licensee within [***] days of their receipt by XXXXcontinuations, divisionals, or the like that substitute for a lapsed application, provided that, ARRAYJET shall have no requirement to file, prosecute, or maintain Licensed Patents if Licensee is not current with the Patent Cost obligations as soon thereafter as reasonably practicable under the circumstances. XXXX shall review and consider set forth in good faith the opinions and proposals submitted by Licensee if such opinions and proposals are provided to XXXX within [***] days from the date XXXX provided the copy of the action or correspondence to Licenseethis Agreement. If XXXX ARRAYJET decides to abandon prosecution or maintenance of any patent or patent application under the Licensed PatentsPatents which Licensee has requested ARRAYJET to make and maintain, XXXX will ARRAYJET shall provide Licensee notice of XXXX’x ARRAYJET’s intent to abandon such application or patent and the parties will determine in good faith how to proceed, taking into account the Patent Costs already expended; provided that so long as Licensee and it sublicensee(s) are and remain current with respect to all obligations owed to XXXX (including without limitation the payment of all Patent Costs) and not otherwise in breach of this Agreement, XXXX will not abandon the applicable patent hereby assigns such application or patent application unless the parties so agree. (v) If, upon issuance of any Licensed Patent, either party reasonably believes in good faith that the subject matter of the issued claims of such Licensed Patent warrant it being moved from the Platform Licensed Patents categorization to the Therapeutic Licensed Patents categorization (or vice versa), then such party will promptly notify the other within [***] days of being notified of the Licensed Patent’s issuance. The parties will thereafter discuss in good faith whether and how to amend this Agreement to account for such re-categorization. (vi) Licensee agrees that it shall cooperate with XXXX in good faith to extend, restoreLicensee, and supplement the term of any Licensed Patent (at XXXX’x selectionARRAYJET shall take all reasonable steps to effect, in consultation with Licensee) under the Drug Price Competition formalize, and Patent Term Restoration Act of 1984, (e.g.perfect such assignment, as codified at 21 U.S.C. § 355 and 35 U.S.C. §§ 156, 271, 282; and implemented in part requested by 37 CFR 1.710 et seqLicensee.), and under any comparable foreign provision (e.g., Regulation (EC) No 469/2009 of the European Parliament and Article 63 of the European Patent Convention). Licensee agrees not to use any dossier, regulatory CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE IT IS BOTH (I) NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. authorization, or any regulatory review period it obtains or incurs as a result of seeking regulatory approval for any Product to seek any patent term extension, restoration, or supplementation for any other patent without first reaching mutual agreement with XXXX, not to be unreasonably withheld or delayed.