Common use of PATENT PROSECUTION AND LITIGATION Clause in Contracts

PATENT PROSECUTION AND LITIGATION. 7.01. Each party shall have and retain sole and exclusive title to all inventions or discoveries conceived by and know-how, including but not limited to any KNOW-HOW, made or generated by, its employees, agents, or other persons acting under its authority in the course of or as a result of this AGREEMENT. Each party shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and know-how made, conceived, or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this AGREEMENT. However, for inventions, discoveries and know-how jointly owned by the parties, ADOLOR shall have a royalty-free exclusive license with the right to sublicense in the ADOLOR FIELD and SB shall have a royalty-free exclusive license with the right to sublicense in the FIELD. Except as expressly provided in this AGREEMENT, and to the extent legally permitted, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, without the consent of and without accounting to the other joint owner. (a) ADOLOR warrants and represents that it has disclosed to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR as of the EFFECTIVE DATE in the TERRITORY (including, but not limited to, method and use claims relating to PRODUCT) as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that it will disclose to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE in the TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORY. SB shall have the right to review all such PATENTS and other proceedings relating thereto and make recommendations to ADOLOR concerning them and their conduct. ADOLOR agrees to keep SB promptly and fully informed of the course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and THIRD PARTY observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to ADOLOR at no cost to ADOLOR. SB shall hold all information disclosed to it under this Paragraph 7.02 as the confidential information of ADOLOR subject to the provisions of Paragraphs 6.03 and 6.04. (b) On or after the date the milestone referred to in Paragraph 3.01 (b)(2) (`**') has been achieved in accordance with the terms of Paragraph 3.01(3), SB shall assist in the defraying of out of pocket costs incurred thereafter by ADOLOR relating to the preparation, prosecution, Administrative Proceeding and maintenance of PATENTS ("Patent Costs") subject to, and in accordance with, the following terms: (i) the Patent Costs must first be approved by SB (such approval not to be unreasonably withheld) prior to being incurred; (ii) subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02 (b) (i), then SB and ADOLOR shall each pay fifty percent (50%) of the total amount of such Patent Costs provided however that if PATENTS which are the subject matter of such Patent Costs are, or have been, licensed to one or more THIRD PARTIES outside of the FIELD, then SB's obligation under this Paragraph 7.02(b)(ii) to pay fifty percent (50%) of the total amount of such Patent Costs ("the SB Total Contribution") shall be reduced such that SB's amended contribution ("the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. an amount equivalent to [the SB Total Contribution] divided by (the number of such THIRD PARTIES plus one].

PATENT PROSECUTION AND LITIGATION. 7.0111.01. EXIGENT agrees to keep SBCL promptly and fully informed of the course of patent prosecution or other proceedings. SBCL shall hold all information disclosed to it under this section as confidential subject to the provisions of Sections 9.02 and 9.03. 11.02. Each party shall have and retain sole and exclusive title to all inventions or inventions, discoveries conceived by and know-howhow which are made, including but not limited conceived, reduced to any KNOW-HOW, made practice or generated by, by its respective employees, agents, or other persons acting under its authority in the course of or as a result of this AGREEMENTAgreement. Each party shall own a fifty percent (50%) undivided interest Ownership in all such inventions, discoveries and know-how made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this AGREEMENT. HoweverAgreement will be negotiated on a case by case basis, for inventions, discoveries and know-how jointly owned by the parties, ADOLOR shall have a royalty-free exclusive license with the right to sublicense in the ADOLOR FIELD and SB event there is no agreement from such negotiation, such ownership shall have a royalty-free exclusive license with the right to sublicense in the FIELDbe divided equally. Except as expressly provided in this AGREEMENT, and Agreement or as subsequently negotiated pursuant to the extent legally permittedforegoing sentence, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, without the consent of and without accounting to the other joint owner. Notwithstanding anything above in this paragraph, if (i) SBCL uses its invention or discovery to modify EXIGENT TECHNOLOGY or (ii) EXIGENT expresses an interest in an exclusive license to SBCL's interest in any joint invention (subject to preexisting rights in THIRD PARTIES), then SBCL and EXIGENT shall in good faith negotiate a license of SBCL's invention or discovery or SBCL's interest in such joint invention, as the case may be, to EXIGENT. (a) ADOLOR warrants and represents that it has disclosed 11.03. SBCL shall have the right to SB the complete texts assume responsibility for any PATENT or any part of all PATENTS filed by a PATENT which EXIGENT intends to abandon or otherwise controlled by ADOLOR cause or allow to be forfeited. EXIGENT shall give SBCL reasonable written notice prior to abandonment or other forfeiture of any PATENT or any part of a PATENT so as to permit SBCL to exercise its rights under this Section. 11.04. In the event of the EFFECTIVE DATE in the TERRITORY (including, but not limited to, method and use claims relating to PRODUCT) as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any interferencesuit by a THIRD PARTY against EXIGENT, oppositionSBCL or its sublicensees or distributors for patent infringement involving the manufacture, re-examinationuse, reissuesale, revocationdistribution or marketing of PRODUCT anywhere in the TERRITORY, nullification the party sued shall promptly notify the other party in writing. If named as a defendant in such suit, SBCL shall have the right but not the obligation to defend such suit at its own expense and shall allow EXIGENT to participate therein if it does assume such defense. If both parties are sued, EXIGENT shall have the right to control the defense thereof EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 11.05. In the event that EXIGENT or any official proceeding involving SBCL becomes aware of actual or threatened infringement of a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that it will disclose to SB party shall promptly notify the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE other party in the TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORYwriting. SB EXIGENT shall have the first right but not the obligation to review all bring, at its own expense, an infringement action against any THIRD PARTY and to use SBCL's name in connection therewith and to name SBCL as a party thereto. If EXIGENT does not commence a particular infringement action within ninety (90) days after receipt of the notice of infringement, then SBCL, after providing reasonable advance notice to EXIGENT in writing, shall be entitled to bring such PATENTS infringement action at its own expense. The party conducting such action shall have full control over its conduct, including settlement thereof subject to Section 11.07. In any event, EXIGENT and SBCL shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting party. 11.06. In any action brought pursuant to Section 11.05 where the interests of SBCL and EXIGENT are adverse, the party bringing the action shall indemnify the other proceedings relating thereto party, its officers, directors, shareholders, employees, agents, successors and make recommendations assigns from any loss, damage or liability, including for attorney's fees and costs, which may result from defending against claims, counterclaims or crossclaims asserted by a defendant, except to ADOLOR concerning them the extent that such losses, damages or liabilities result from the negligence or willful misconduct of the other party. 11.07. In a joint action by EXIGENT and SBCL, each shall recover their conductrespective actual out -of-pocket expenses, or equitable proportions thereof, associated with any litigation or settlement thereof from any recovery made by any party. 11.08. ADOLOR agrees to The parties shall keep SB promptly and fully one another informed of the course status of patent prosecution and of their respective activities regarding any litigation or other proceedings including by providing SB with copies of substantive communicationssettlement thereof concerning PRODUCT, search reports and THIRD PARTY observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to ADOLOR at no cost to ADOLOR. SB shall hold all information disclosed to it under this Paragraph 7.02 as the confidential information of ADOLOR subject to the provisions of Paragraphs 6.03 and 6.04. (b) On or after the date the milestone referred to in Paragraph 3.01 (b)(2) (`**') has been achieved in accordance with the terms of Paragraph 3.01(3), SB shall assist in the defraying of out of pocket costs incurred thereafter by ADOLOR relating to the preparation, prosecution, Administrative Proceeding and maintenance of PATENTS ("Patent Costs") subject to, and in accordance with, the following terms: (i) the Patent Costs must first be approved by SB (such approval not to be unreasonably withheld) prior to being incurred; (ii) subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02 (b) (i), then SB and ADOLOR shall each pay fifty percent (50%) of the total amount of such Patent Costs provided however that if PATENTS which are no settlement or consent judgment or other voluntary final disposition of any suit defended or action brought by a party pursuant to this Section 11 may be entered into without the subject matter of such Patent Costs are, or have been, licensed to one or more THIRD PARTIES outside consent of the FIELD, then SBother party if such settlement would require the other party to be subject to an injunction or to make a monetary payment or would otherwise adversely affect the other party's obligation rights under this Paragraph 7.02(b)(ii) to pay fifty percent (50%) of the total amount of such Patent Costs ("the SB Total Contribution") Agreement. No party withholding consent from a proposed settlement shall be reduced such that SBindemnified for any amount above the amount at which it could have settled under the proposed settlement. 11.09. At SBCL's amended contribution ("request, EXIGENT shall seek to obtain SPC's or authorize SBCL to obtain SPC's on EXIGENT's behalf. Where SBCL holds a relevant Marketing Authorization, SBCL shall at EXIGENT's request provide to EXIGENT a copy of said Marketing Authorization and any information necessary for the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. purpose of obtaining an amount equivalent to [the SB Total Contribution] divided by (the number of such THIRD PARTIES plus one]SPC.

PATENT PROSECUTION AND LITIGATION. 7.01. 9.1 Each party shall have and retain sole and exclusive title to all inventions or inventions, discoveries conceived by and know-how, including but not limited to any KNOW-HOWHOW which are made, made conceived, reduced to practice or generated by, by its employees, agents, or other persons acting under its authority in the course of or as a result of this AGREEMENT. Each party shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and knowKNOW-how HOW made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this AGREEMENT. However, for inventions, discoveries and know-how jointly owned by the parties, ADOLOR shall have a royalty-free exclusive license with the right to sublicense in the ADOLOR FIELD and SB shall have a royalty-free exclusive license with the right to sublicense in the FIELD. Except as expressly provided in this AGREEMENT, and to the extent legally permitted, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and knowKNOW-howHOW, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and knowKNOW-howHOW, without the consent of and without accounting to the other joint owner. (a) ADOLOR warrants 9.2 TBC shall, at its expense, have responsibility for filing, prosecution and represents that maintenance of all PATENTS which it has disclosed owns in the TERRITORY. TBC shall disclose to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR as of the EFFECTIVE DATE TBC in the TERRITORY (including, but not limited to, method and use claims relating which relate to PRODUCT) PRODUCT as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that it will disclose to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE in the TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORY. SB shall have the right to review all such PATENTS pending applications and other proceedings relating thereto and make recommendations to ADOLOR TBC concerning them and their conduct. ADOLOR TBC agrees to keep SB promptly and fully informed of the course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and THIRD PARTY third party observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to ADOLOR TBC at no cost to ADOLORTBC. SB shall hold all information disclosed to it under this Paragraph 7.02 section as the confidential information of ADOLOR subject to the provisions of Paragraphs 6.03 9.03 and 6.049.04. (b) On or after the date the milestone referred to in Paragraph 3.01 (b)(2) (`**') has been achieved in accordance with the terms of Paragraph 3.01(3), SB shall assist in the defraying of out of pocket costs incurred thereafter by ADOLOR relating to the preparation, prosecution, Administrative Proceeding and maintenance of PATENTS ("Patent Costs") subject to, and in accordance with, the following terms: (i) the Patent Costs must first be approved by SB (such approval not to be unreasonably withheld) prior to being incurred; (ii) subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02 (b) (i), then SB and ADOLOR shall each pay fifty percent (50%) of the total amount of such Patent Costs provided however that if PATENTS which are the subject matter of such Patent Costs are, or have been, licensed to one or more THIRD PARTIES outside of the FIELD, then SB's obligation under this Paragraph 7.02(b)(ii) to pay fifty percent (50%) of the total amount of such Patent Costs ("the SB Total Contribution") shall be reduced such that SB's amended contribution ("the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. an amount equivalent to [the SB Total Contribution] divided by (the number of such THIRD PARTIES plus one].

PATENT PROSECUTION AND LITIGATION. 7.018.1 All right, title and interest to the VICAL TECHNOLOGY and all patent rights and other intellectual property rights therein shall belong solely to VICAL. Each VICAL shall have the sole right and responsibility for the filing, prosecution and maintenance of patents and patent applications directed thereto. 8.2 In the event that VGI or VICAL becomes aware of actual or threatened infringement of a VICAL PATENT that claims a LICENSED PRODUCT or the use thereof, that party shall promptly notify the other party in writing. VICAL shall have and retain sole and exclusive title to all inventions or discoveries conceived by and know-how, including the first right but not limited the obligation to bring, at its own expense, an infringement action against any KNOW-HOWTHIRD PARTY and to use VGI’s name in connection therewith. If VICAL does not commence a particular infringement action within ninety (90) days, made or generated byVGI, after notifying VICAL in writing, shall be entitled to bring such infringement action, in its employees, agents, or other persons acting under its authority own name and/or in the course name of or as a result of this AGREEMENT. Each party shall VICAL, at its own a fifty percent (50%) undivided interest in all such inventions, discoveries and know-how made, conceived, or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this AGREEMENT. However, for inventions, discoveries and know-how jointly owned by the parties, ADOLOR shall have a royalty-free exclusive license with the right to sublicense in the ADOLOR FIELD and SB shall have a royalty-free exclusive license with the right to sublicense in the FIELD. Except as expressly provided in this AGREEMENT, and expense to the extent legally permittedthat such party is licensed thereunder. The foregoing notwithstanding, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities in the event that an alleged infringer certifies pursuant to 8.3 Any recovery made by a sole owner might undertake with respect to such inventions, discoveries and know-how, without party as the consent result of and without accounting to the other joint owner.an action for patent infringement it has conducted under Section 8.2 shall be distributed as follows: (a) ADOLOR warrants The party conducting the action shall recover its actual out-of-pocket expenses, and represents that it has disclosed to SB then shall reimburse the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR as of the EFFECTIVE DATE in the TERRITORY (including, but not limited to, method other party for any unreimbursed actual and use claims relating to PRODUCT) as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any interference, opposition, reout-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that it will disclose to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE in the TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, reof-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORY. SB shall have the right to review all such PATENTS and other proceedings relating thereto and make recommendations to ADOLOR concerning them and their conduct. ADOLOR agrees to keep SB promptly and fully informed of the course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and THIRD PARTY observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to ADOLOR at no cost to ADOLOR. SB shall hold all information disclosed to it under this Paragraph 7.02 as the confidential information of ADOLOR subject to the provisions of Paragraphs 6.03 and 6.04pocket expenses. (b) On or after To the date extent that the milestone referred to in Paragraph 3.01 recovery exceeds the total of item (b)(2) (`**') has been achieved in accordance with the terms of Paragraph 3.01(3a), SB the excess shall assist in be kept by the defraying of out of pocket costs incurred thereafter by ADOLOR relating party conducting the action, provided, however, that to the preparationextent that the recovery is based on an award of lost sales/profits, prosecution, Administrative Proceeding and maintenance of PATENTS ("Patent Costs") subject to, and in accordance with, the following terms: (i) the Patent Costs must first be approved by SB (such approval not to be unreasonably withheld) prior to being incurred; (ii) subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02 (b) (i), then SB and ADOLOR VICAL shall each pay fifty percent (50%) receive a proportion of the total amount of such Patent Costs provided however that if PATENTS which are excess recovery corresponding to the subject matter of such Patent Costs are, or royalty percentage it would have been, licensed to one or more THIRD PARTIES outside otherwise been due on those lost sales/profits and VICAL shall receive the proportion of the FIELD, then SB's obligation under this Paragraph 7.02(b)(ii) excess recovery corresponding to pay fifty percent (50%) the lost sales/profits. 8.4 The parties shall periodically keep one another reasonably informed of the total amount status of their respective activities regarding any such Patent Costs ("the SB Total Contribution") shall be reduced such that SB's amended contribution ("the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. an amount equivalent to [the SB Total Contribution] divided by (the number of such THIRD PARTIES plus one]litigation or settlement thereof.

PATENT PROSECUTION AND LITIGATION. 7.01. 14.1 Each party PARTY shall have and retain sole and exclusive title to all inventions or inventions, discoveries conceived by and know-how, including but not limited to any KNOW-HOWHOW which are made, made conceived, reduced to practice or generated by, by [Confidential Treatment requested for redacted portions of document.] Page 40 44 its employees, agents, or other persons acting under its authority in the course of or as a result of this AGREEMENT. Each party PARTY shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and knowKNOW-how HOW made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of this AGREEMENT. However, for inventions, discoveries and know-how jointly owned by the parties, ADOLOR shall have a royalty-free exclusive license with the right to sublicense in the ADOLOR FIELD and SB shall have a royalty-free exclusive license with the right to sublicense in the FIELD. Except as expressly provided in this AGREEMENT, and to the extent legally permitted, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and knowKNOW-howHOW, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and knowKNOW-howHOW, without the consent of and without accounting to the other joint owner. (a) ADOLOR warrants and represents that it has disclosed 14.2 MPI shall disclose to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR as of the EFFECTIVE DATE MPI in the TERRITORY (including, but not limited to, method and use claims relating which relate to PRODUCT) PRODUCT as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that it will disclose to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE in the TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORY. SB shall have the right to review all such PATENTS pending applications and other proceedings relating thereto and make recommendations to ADOLOR MPI concerning them and their conduct. ADOLOR MPI agrees to keep SB promptly and fully informed of the course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and THIRD PARTY observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to ADOLOR MPI at no cost to ADOLORMPI. SB shall hold all information disclosed to it under this Paragraph 7.02 section as the confidential information of ADOLOR subject to the provisions of Paragraphs 6.03 and 6.04. (b) On or after the date the milestone referred to in Paragraph 3.01 (b)(2) (`**') has been achieved in accordance with the terms provisions of Paragraph 3.01(3)Article 13. 14.3 SB shall have the right to assume responsibility for any PATENT or any part of a PATENT which MPI intends to abandon or otherwise cause or allow to be forfeited. 14.4 In the event of the institution of any suit by a THIRD PARTY against MPI, SB, its AFFILIATES or subdistributors for patent infringement involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the PARTY sued shall promptly notify the other PARTY in writing. SB shall have the right but not the obligation to defend such suit at its own expense, provided there is prior notification and [Confidential Treatment requested for redacted portions of document.] Page 41 45 consultation with MPI. MPI and SB shall assist one another and cooperate in any such litigation at the other's request without expense to the requesting PARTY. 14.5 In the event that MPI or SB becomes aware of actual or threatened infringement of a PATENT anywhere in the defraying of out of pocket costs incurred thereafter by ADOLOR relating TERRITORY, that PARTY shall promptly notify the other PARTY in writing. SB shall have the first right but not the obligation to the preparationbring, prosecutionat its own expense, Administrative Proceeding an infringement action against any THIRD PARTY, provided there is prior notification to and maintenance of PATENTS ("Patent Costs") subject toconsultation with MPI, and to use MPI's name in accordance withconnection therewith and to name MPI as a party thereto. If SB does not commence a particular infringement action within ninety (90) days of receipt of the notice of infringement, the following terms: (i) the Patent Costs must first then MPI, after notifying SB in writing, shall be approved by SB (entitled to bring such approval not to be unreasonably withheld) prior to being incurred; (ii) infringement action at its own expense. The PARTY conducting such action shall have full control over its conduct, including settlement thereof subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02 (b) (i), then SB and ADOLOR shall each pay fifty percent (50%) of the total amount of such Patent Costs provided however that if PATENTS which are the subject matter of such Patent Costs are, or have been, licensed to one or more THIRD PARTIES outside of the FIELD, then SB's obligation under this Paragraph 7.02(b)(ii) to pay fifty percent (50%) of the total amount of such Patent Costs ("the SB Total Contribution") shall be reduced such that SB's amended contribution ("the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. an amount equivalent to [the SB Total Contribution] divided by (the number of such THIRD PARTIES plus one]14.

PATENT PROSECUTION AND LITIGATION. 7.018.1 All right, title and interest to the VICAL TECHNOLOGY and all patent rights and other intellectual property rights therein shall belong solely to VICAL. Each VICAL shall have the sole right and responsibility for the filing, prosecution and maintenance of patents and patent applications directed thereto. 8.2 In the event that VGI or VICAL becomes aware of actual or threatened infringement of a VICAL PATENT that claims a LICENSED PRODUCT or the use thereof, that party shall promptly notify the other party in writing. VICAL shall have and retain sole and exclusive title to all inventions or discoveries conceived by and know-how, including the first right but not limited the obligation to bring, at its own expense, an infringement action against any KNOW-HOWTHIRD PARTY and to use VGI's name in connection therewith. If VICAL does not commence a particular infringement action within ninety (90) days, made or generated byVGI, after notifying VICAL in writing, shall be entitled to bring such infringement action, in its employees, agents, or other persons acting under its authority own name and/or in the course name of or as a result of this AGREEMENTVICAL, at its own expense to the extent that such party is licensed thereunder. Each party shall own a fifty percent (50%) undivided interest in all such inventionsThe foregoing notwithstanding, discoveries and know-how made, conceived, or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course event that an alleged infringer certifies pursuant to 21 U.S.C. Section 355(b)(2)(A)(iv) against an issued VICAL PATENT covering a LICENSED PRODUCT, as between VICAL AND VGI, the party receiving notice of or as a result such certification shall immediately notify the other party of this AGREEMENT. Howeversuch certification, for inventionsand if fourteen (14) days prior to expiration of the forty five (45) day period set forth in 21 U.S.C. Section 355(c)(3)(C), discoveries and know-how jointly owned by VICAL fails to commence an infringement action, the partiesparty receiving notice, ADOLOR shall have a royalty-free exclusive license with the right to sublicense in the ADOLOR FIELD and SB shall have a royalty-free exclusive license with the right to sublicense in the FIELD. Except as expressly provided in this AGREEMENTits sole discretion, at its own expense and to the extent legally permittedthat it is licensed under the patent, each joint owner may makeshall be entitled to bring such infringement action in its own name and/or in the name of the patent owner. The party conducting an action under this Section 8.2 shall have full control over its conduct, use, sell, keep, license, assign, or mortgage including settlement thereof provided such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, settlement shall not be made without the prior written consent of and without accounting to the other joint ownerparty if it would adversely affect the patent rights of such party licensed hereunder. VICAL and VGI shall reasonably assist one another and cooperate in any such litigation at the other's request. The party conducting the litigation shall reimburse the other party for its reasonable and actual out-of-pocket expenses incurred at the request of the party conducting the litigation for assisting in the litigation, which reimbursement shall be made within thirty (30) days of receipt by the party conducting the litigation of itemized invoices from the assisting party documenting such expenses. 8.3 Any recovery made by a party as the result of an action for patent infringement it has conducted under Section 8.2 shall be distributed as follows: (a) ADOLOR warrants The party conducting the action shall recover its actual out -of-pocket expenses, and represents that it has disclosed to SB then shall reimburse the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR as of the EFFECTIVE DATE in the TERRITORY (including, but not limited to, method other party for any unreimbursed actual and use claims relating to PRODUCT) as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any interference, opposition, reout-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that it will disclose to SB the complete texts of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE in the TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, reof-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORY. SB shall have the right to review all such PATENTS and other proceedings relating thereto and make recommendations to ADOLOR concerning them and their conduct. ADOLOR agrees to keep SB promptly and fully informed of the course of patent prosecution or other proceedings including by providing SB with copies of substantive communications, search reports and THIRD PARTY observations submitted to or received from patent offices throughout the TERRITORY. SB shall provide such patent consultation to ADOLOR at no cost to ADOLOR. SB shall hold all information disclosed to it under this Paragraph 7.02 as the confidential information of ADOLOR subject to the provisions of Paragraphs 6.03 and 6.04pocket expenses. (b) On or after To the date extent that the milestone referred to in Paragraph 3.01 recovery exceeds the total of item (b)(2) (`**') has been achieved in accordance with the terms of Paragraph 3.01(3a), SB the excess shall assist in be kept by the defraying of out of pocket costs incurred thereafter by ADOLOR relating party conducting the action, provided, however, that to the preparationextent that the recovery is based on an award of lost sales/profits, prosecution, Administrative Proceeding and maintenance of PATENTS ("Patent Costs") subject to, and in accordance with, the following terms: (i) the Patent Costs must first be approved by SB (such approval not to be unreasonably withheld) prior to being incurred; (ii) subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02 (b) (i), then SB and ADOLOR VICAL shall each pay fifty percent (50%) receive a proportion of the total amount of such Patent Costs provided however that if PATENTS which are excess recovery corresponding to the subject matter of such Patent Costs are, or royalty percentage it would have been, licensed to one or more THIRD PARTIES outside otherwise been due on those lost sales/profits and VGI shall receive the proportion of the FIELD, then SB's obligation under this Paragraph 7.02(b)(ii) excess recovery corresponding to pay fifty percent (50%) the lost sales/profits. 8.4 The parties shall periodically keep one another reasonably informed of the total amount status of their respective activities regarding any such Patent Costs ("the SB Total Contribution") shall be reduced such that SB's amended contribution ("the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. an amount equivalent to [the SB Total Contribution] divided by (the number of such THIRD PARTIES plus one]litigation or settlement thereof.

PATENT PROSECUTION AND LITIGATION. 7.01. 7.01 Each party shall have and retain sole and exclusive title to all inventions or inventions, discoveries conceived by and know-howhow which are made, including but not limited conceived, reduced to any KNOW-HOW, made practice or generated by, solely by its employees, agents, or other persons acting under its authority in the course of or as a result of the performance of activities under this AGREEMENTAgreement. Each party shall own a fifty percent (50%) undivided interest in all such inventions, discoveries and know-how made, conceived, reduced to practice or generated jointly by employees, agents, or other persons acting under the authority of both parties in the course of or as a result of the performance of activities under this AGREEMENTAgreement. HoweverFor the avoidance of doubt, it is understood and agreed that LICENSOR is not obligated to, and has no intent of being involved at all with LICENSEE in the development or commercialization of PRODUCT under this Agreement, and that the responsibility for inventionsthe development and commercialization of PRODUCT rests solely with LICENSEE, except as provided in Appendix E and in Section 4.04. LICENSOR shall have the right to file, prosecute and maintain patent applications and patents directed to inventions and discoveries that are owned in whole by LICENSOR in accordance with this Section 7.01. LICENSEE shall have the right to file, prosecute and know-how maintain patent applications and patents directed to inventions and discoveries that are owned in whole by LICENSEE in accordance with this Section 7.01. Both parties shall have the right to file, prosecute and maintain patent applications and patents directed to inventions and discoveries that are jointly owned by LICENSEE and by LICENSOR in accordance with this Section 7.01 and the parties shall agree upon which of them shall take the lead in filing, prosecuting and maintaining such patent applications at the equal expense of both parties. If either party declines to exercise its rights to file, ADOLOR prosecute and maintain patent applications or patents hereunder, the other party shall have a royalty-free exclusive license with the right to sublicense in the ADOLOR FIELD file, prosecute and SB shall have a royalty-free exclusive license with the right to sublicense in the FIELD. Except as expressly provided in this AGREEMENT, maintain such patent applications and to the extent legally permitted, each joint owner may make, use, sell, keep, license, assign, or mortgage such jointly owned inventions, discoveries and know-how, and otherwise undertake all activities a sole owner might undertake with respect to such inventions, discoveries and know-how, without the consent of and without accounting to the other joint ownerpatents at its own expense. (a) ADOLOR warrants and represents that it has disclosed 7.02 LICENSOR shall disclose to SB LICENSEE the complete texts of all patents and patent applications that are PATENTS filed by or otherwise controlled by ADOLOR as well as of all correspondence to or from the EFFECTIVE DATE in U.S. Patent and Trademark Office, and other patent offices around the TERRITORY (includingworld, but not limited to, method and use claims relating to PRODUCT) such patents and patent applications, as well as all information received as of the EFFECTIVE DATE concerning the institution or possible institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT anywhere in the TERRITORY, ADOLOR further warrants and represents that it will disclose . All such disclosures shall be subject to SB the complete texts provisions of all PATENTS filed by or otherwise controlled by ADOLOR after the EFFECTIVE DATE in the TERRITORY as well as all information received after the EFFECTIVE DATE concerning the institution or possible institution any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving a PATENT (the "Administrative Proceedings") anywhere in the TERRITORYSection 6.03. SB LICENSEE shall have the right to review comment upon all patent office communications concerning such PATENTS patents and other proceedings relating thereto patent applications as well as on all proposed responses to such communications. 7.03 In addition, LICENSOR shall consult with patent attorneys appointed by LICENSEE prior to taking any action that would result in the narrowing of claims that cover the making, using, or selling of a PRODUCT, or that would otherwise reduce the patent coverage for a PRODUCT, provided that the fees and make recommendations to ADOLOR concerning them and their conduct. ADOLOR agrees to keep SB promptly and fully informed expenses of the course appointed patent attorneys shall be paid by LICENSEE. LICENSEE shall have the right to assume responsibility for any PATENT or any part of patent prosecution a PATENT that covers the making, using or other proceedings including selling of a PRODUCT and that LICENSOR intends to abandon or otherwise cause or allow to be forfeited. 7.04 In the event of the institution of any suit by providing SB with copies of substantive communications, search reports and a THIRD PARTY observations submitted to against LICENSOR, LICENSEE or received from its sublicensees for patent offices throughout infringement involving the manufacture, use, sale, distribution or marketing of PRODUCT anywhere in the TERRITORY, the party sued shall promptly notify the other party in writing. SB LICENSEE shall provide have the right but not the obligation to defend such patent consultation to ADOLOR suit at no cost to ADOLORits own expense. SB LICENSOR and LICENSEE shall hold all information disclosed to it under this Paragraph 7.02 as assist one another and cooperate in any such litigation at the confidential information of ADOLOR subject other's reasonable request without expense to the provisions of Paragraphs 6.03 and 6.04requesting party. (b) On 7.05 In the event that LICENSOR or after LICENSEE becomes aware of actual or threatened infringement of a patent claim in a PATENT, which claim covers the date the milestone referred to in Paragraph 3.01 (b)(2) (`**') has been achieved in accordance with the terms making, using, or selling of Paragraph 3.01(3), SB shall assist a product in the defraying FIELD anywhere in the TERRITORY, that party shall promptly notify the other party in writing. LICENSEE shall have the first right but not the obligation to bring, at its own expense, an infringement action against any THIRD PARTY and, if required in order to bring or maintain such action or to recover the full measure of out of pocket costs incurred thereafter by ADOLOR relating damages, to the preparationuse LICENSOR's name in connection therewith and to include LICENSOR as a party thereto. If LICENSEE does not commence a particular infringement action within ninety (90) days, prosecutionLICENSOR, Administrative Proceeding and maintenance of PATENTS ("Patent Costs") subject toif LICENSEE consents, and in accordance withshall be entitled to bring such infringement action at its own expense. The party conducting such action shall have full control over its conduct, the following terms: (i) the Patent Costs must first be approved by SB (such approval not to be unreasonably withheld) prior to being incurred; (ii) including settlement thereof, subject to Paragraph 7.02(b)(iii), if such Patent Costs are approved in accordance with Paragraph 7.02 (b) (i), then SB and ADOLOR shall each pay fifty percent (50%) of the total amount of such Patent Costs provided however that if PATENTS which are the subject matter of such Patent Costs are, or have been, licensed to one or more THIRD PARTIES outside of the FIELD, then SB's obligation under this Paragraph 7.02(b)(ii) to pay fifty percent (50%) of the total amount of such Patent Costs ("the SB Total Contribution") shall be reduced such that SB's amended contribution ("the SB Reduced Contribution") then equates to **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. an amount equivalent to [the SB Total Contribution] divided by (the number of such THIRD PARTIES plus one]7.