Common use of Patent Prosecution and Maintenance Clause in Contracts

Patent Prosecution and Maintenance. 6.1 The Company, at its sole cost and expense, shall diligently prosecute and maintain the Patent Rights as set forth in Appendix I hereto (as the same may be amended or supplemented from time to time after the date hereof), including, but not limited to, the filing of patent applications for Improvements, utilizing such patent counsel as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert to the Licensor. Prior to any such abandonment, the Company shall give the Licensor at least 60 days notice and a reasonable opportunity to take over prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rights.

Patent Prosecution and Maintenance. 6.1 The Company, at its sole cost Within three months from the execution of this Agreement the parties shall set forth a procedure by which the Licensor will monitor the Patents and expense, shall diligently prosecute and maintain the Patent Rights as set forth in Appendix I Schedule A hereto (as the same may be amended or supplemented from time to time after the date hereof), for which the Company will be responsible to diligently prosecute and maintain in the Territory the Patent Rights including, but not limited to, the filing of patent applications for Improvementsinventions and improvements to the Invention, discovered by the Licensor or the Company, utilizing such patent counsel as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Patents Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert have no further royalty obligation to the LicensorLicensor in respect of any Licensed Products and Licensed Processes the manufacture, use or sale of which is covered by an issued claim of such abandoned Patent Rights. Prior to any such abandonment, the Company shall give the Licensor at least 60 days notice and a reasonable opportunity to take over assume prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed ProductsProducts and Licensed Processes, the manufacture, use or sale of which is covered by a valid and unexpired an issued claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments assignment or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rights.

Patent Prosecution and Maintenance. 6.1 The (a) Company shall have the sole responsibility to file, prosecute and maintain all patent applications and patents included in the Licensed Patents and the Program Patents. If requested by Company and subject to Licensor’s agreement, Licensor will file, prosecute and maintain all such patent applications and patents (the “Patent Prosecution Services”) as directed by Company, provided Licensor may at any time cease to provide the Patent Prosecution Services by written notice to Company. (b) To the extent Licensor is not providing the Patent Prosecution Services, Company shall provide Licensor (or its designee) with an opportunity to review and discuss with Company prosecution strategy and to consult with Company on the content of patent filings. Specifically, prior to filing prosecution documents or new patent applications, Company will give Licensor (or its designee) at least [***] days to review drafts of the foregoing and comment on such drafts. Company will reasonably consider Licensor’s comments with respect to such drafts. (c) Company shall be responsible for all costs, fees and expenses incurred from and after the Effective Date in connection with the filing and prosecution of all patent applications and patents included in the Licensed Patents and the Program Patents. To the extent Licensor is providing the Patent Prosecution Services, Company will reimburse Licensor within [***] days of receipt of invoice for all Third Party costs, fees and expenses incurred by Licensor in connection with the Patent Prosecution Services; other than Third Party costs, Licensor will not charge Company for the Patent Prosecution Services. [***]. (d) Company agrees to notify Licensor in writing in a timely manner if it does not desire to support the continued prosecution or appeals or maintenance of any patent applications or patents included in the Licensed Patents or the Program Patents. In the event Company declines to pursue, or does not, within [***] days following written request from Licensor, take reasonably requested action with respect to, the filing, prosecution or maintenance of any patent applications or patents included in the Licensed Patents or Program Patents, Licensor may, at its sole cost and own expense, shall diligently continue to prosecute or maintain such application or patent, and maintain the Patent Rights as set forth in Appendix I hereto (as the same may be amended or supplemented from time to time after the date hereof), including, but not limited to, the filing of patent applications for Improvements, utilizing such patent counsel application or patent shall cease to be included in the Licensed Patents or Program Patents, as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applicationsapplicable, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to under this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert to the Licensor. Prior to any such abandonment, the Company shall give the Licensor at least 60 days notice and a reasonable opportunity to take over prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rights.

Patent Prosecution and Maintenance. 6.1 The Company, at its sole cost (a) Subject to Section 3.6(b) and expense, shall diligently prosecute and maintain the Patent Rights as set forth in Appendix I hereto (as the same may be amended or supplemented from time to time after the date hereofSection 3.6(c), including, but not limited to, each Party and its Subsidiaries retain the filing of patent applications for Improvements, utilizing such patent counsel as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert to the Licensor. Prior to any such abandonment, the Company shall give the Licensor at least 60 days notice and a reasonable opportunity to take over prosecution of such Patent Rights. In such event, the Licensor shall have the sole right, but not the obligation, to commence protect at their sole discretion the Patents owned or continue controlled by such Party and its Subsidiaries, including deciding whether and how to file and prosecute applications included in such Party’s Intellectual Property Rights, whether to abandon prosecution of such applications, and whether to maintain discontinue payment of any maintenance or renewal fees with respect to any such registration or issued items. (b) Each Party, as Licensor of the Patents licensed under Section 2.1(a), Section 2.2(a) and Section 2.3(a), shall cooperate with Licensee to formulate commercially reasonable processes to keep the Licensee reasonably apprised of the status of such Patents, and such processes may vary on a Patent-by-Patent or Technology-by-Technology basis. (c) Should the Parent Licensors choose to cease prosecution or maintenance of a Parent Patch Pump Patent licensed under Section 2.2(a) or Parent Dual-Use Patent licensed under Section 2.3(a), or choose not to defend the validity or enforceability of such Patent (such as pursuant to an inter partes review, opposition, reexamination, business method review, or post-grant challenge to a registration), the Parent Licensors shall promptly offer the SpinCo Licensees the opportunity to take over such prosecution, maintenance or defense (including, without limitation, by assuming an application or by filing a continuation application with respect to any claims abandoned or amended by Parent Licensors), in each case prior to any abandonment of rights therefor. Upon SpinCo Licensee’s request, Parent Licensor shall assign any such Patent Rights to a SpinCo Licensee at no cost and provide such assistance and perform such actions as may be requested by SpinCo Licensee in connection therewith or any maintenance, defense, or enforcement thereof. SpinCo Licensees hereby grant Purchaser Licensors a worldwide, nonexclusive, sublicensable (solely to the extent provided in Section 3.2), royalty-free, fully paid, nontransferable and sublicensable (except as set forth in Section 8.4), irrevocable, unrestricted right and license under its own control and at its expense and the Company shall then make no further use of any such Patent Rights assigned to Purchaser Licensees by Seller Licensors; provided that the field of the foregoing license with respect to (i) any Parent Patch Pump Patent shall not include the SpinCo Licensees’ exclusive field in Section 2.2(a), or (ii) any Parent Dual-Use Patent shall not include the SpinCo Licensees’ exclusive field in Section 2.3(a). Additionally, if Parent Licensor elects not to seek patent protection in a territory where SpinCo Licensees desires to do so and the corresponding Patent (if issued) would be considered a Parent Dual-Use Patent or Parent Patch Pump Patent, then SpinCo Licensees may require Parent Licensor to facilitate the filing at the SpinCo Licensee’s expense, and SpinCo Licensees shall have no royalty or other obligation remain obligated to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid reimburse continuing costs associated with prosecution and unexpired claim maintenance of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent RightsPatent.

Patent Prosecution and Maintenance. 6.1 The CompanyFollowing the Effective Date, at its sole cost and expense, the Company shall diligently prosecute and maintain the Patent Rights as set forth in Appendix I Exhibit C hereto (as the same may be amended or supplemented from time to time after the date hereof), including, but not limited to, the filing of patent applications for Improvements, utilizing such patent counsel as which may be mutually agreed upon by the parties heretorequired. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's ’s comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application applications or issued patent comprising in the Patent Rights, in which case the Company shall make have no further royalty obligation to Licensor in respect of any Licensed Products and Licensed Processes the manufacture, use or sale of which is covered by an issued claim of such abandoned Patent Rights and such rights shall revert to the LicensorRights. Prior to any such abandonment, the Company shall give the Licensor at least 60 sixty (60) days notice and a reasonable opportunity to take over prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed ProductsProducts and Licensed Processes, the manufacture, use or sale of which is covered by a valid and unexpired an issued claim of such Patent Rights. The Company agrees to cooperate in such activities, activities including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rights.

Patent Prosecution and Maintenance. 6.1 The CompanyFollowing the Effective Date, at its sole cost the Company’s expense and expenseproviding Licensor has received the Patent Fee, the Company shall diligently prosecute and maintain the Patent Rights as set forth in Appendix I Exhibit A hereto (as the same may be amended or supplemented from time to time after the date hereof), including, but not limited to, the filing of patent applications for Improvements, utilizing such patent counsel as which may be mutually agreed upon by the parties heretorequired. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's ’s comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application applications or issued patent comprising in the Patent Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert to the Licensor. Prior to any such abandonment, the Company shall give the Licensor at least 60 sixty- (60) days notice and a reasonable opportunity to take over prosecution of such Patent Rightspatent or patent application. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights patent or patent obligation under its own control and at its expense and in which case the license to Company shall then make no further use of any to such Patent Rights and shall have no royalty patent or other obligation to the Licensor patent application in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rightsjurisdiction will terminate. The Company agrees to cooperate in such activities, activities including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rightspatents or patent applications. 6.3 Licensor hereby authorizes the Company (a) to include in any NDA for a Licensed Product, as the Company may deem appropriate under the Federal Food, Drug and Cosmetic Act (the “Act”), a list of patents included among the Licensed Patents that relate to such Licensed Product and such other information as the Company in its reasonable discretion believes is appropriate to be filed pursuant to the Act; (b) to commence suit for any infringement of the Licensed Patents under §271(e) of Title 35 of the United States Code occasioned by the submission by a third party of an IND, an Abbreviated New Drug Application (as that term is defined in the Act ) for a Licensed Product pursuant to §505(j) of the Act or an NDA for a Licensed Product pursuant to §505(b)(2) of the Act; and (c) to exercise any rights that may be exercisable by Licensor as patent owner under the Act to apply for an extension of the term of any patent included among the Licensed Patents. In the event that applicable law in any other country of the Territory hereafter provides for the extension of the term of any patent included among the Licensed Patents in such country, upon request by and at the expense of the Licensee, the Licensor shall use commercially reasonable efforts to obtain such extension or, in lieu thereof, shall authorize the Company or, if requested by the Company or its sublicensees to apply for such extension, in consultation with Licensor. 6.4 Licensor, at the Company’s expense, agrees to reasonably cooperate with the Company or its sublicensees, as applicable, in the exercise of the authorization granted herein or which may be granted pursuant to this Article 6 and will execute such documents and take such additional actions as the Company may reasonably request in connection therewith, including, if necessary, permitting itself to be joined as a proper party in any suit for infringement brought by the Company under Section 6.2 and/or Section 6.3 above.

Patent Prosecution and Maintenance. 6.1 The Company(a) Company shall have the first right, but not the obligation, to be responsible for the preparation, filing, prosecution, maintenance and extension of the Company Patents and the Patent Rights within the Product IP in the Licensed Territory, at its expense. Company shall keep SpePharm advised on the status of preparation, filing and prosecution of all patent applications included within the Company Patents in the Licensed Territory and the maintenance and extension of any issued patents within the Company Patents in the Licensed Territory, and shall allow SpePharm a reasonable opportunity and reasonable time to review and comment regarding relevant material communications and drafts of any material responses or proposed filings by Company before any applicable filings are submitted to any relevant patent office or government authority, and incorporate any reasonable comments offered by SpePharm in any final filings submitted by Company to any relevant patent office or government authority in the Licensed Territory. (b) If Company decides not to file, prosecute, maintain or extend a Company Patent or Patent Rights within the Product IP, in each case, in the Licensed Territory, it shall give SpePharm reasonable notice to that effect sufficiently in advance of any deadline for any filing with respect to such Patent Right to permit SpePharm to carry out such activity. After such notice, SpePharm may file, prosecute, maintain and extend such Patent Right, and perform such acts as may be reasonably necessary for it to file, prosecute, maintain or extend such Patent Right, at its sole cost and expense, shall diligently prosecute provided that SpePharm may deduct one hundred percent (100%) of its costs and maintain the Patent Rights as set forth expenses incurred in Appendix I hereto (as the same may be amended or supplemented from time to time after the date hereof)such filing, includingprosecution, but not limited to, the filing of patent applications for Improvements, utilizing such patent counsel as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed with respect to the status maintenance and progress of any such applications, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company shall make no further use extension of such Patent Rights from the royalties or any other amounts payable by SpePharm to Company under this Agreement, provided that the royalties payable to Company shall not be reduced by more than fifty percent (50%) by reason of this Section 11.2(b), and any such rights shall revert payments to Third Parties not applied to reduce royalties as a result of the forgoing proviso may be carried over to subsequent calendar quarters and applied to reduce royalties (subject to the Licensoraforementioned fifty percent (50%) limitation) in such subsequent calendar quarters. Prior to any such abandonmentIf SpePharm does so elect, the then Company shall give provide such cooperation to the Licensor at least 60 days notice SpePharm, including the execution and a reasonable opportunity filing of appropriate instruments, as may reasonably be requested to take over prosecution facilitate the transition of such patent activities. (c) The filing, prosecution, maintenance and extension of any Patent Rights. In such event, Rights within Joint IP will be jointly managed by the Licensor shall have Parties on mutually agreeable terms (including as to costs and expenses) to be entered into by the right, but not Parties at the obligation, to commence or continue such prosecution and to maintain time any such Patent Rights under its own control are first filed. The filing, prosecution, maintenance and extension of any Patent Rights within General IP will be managed by SpePharm, at its expense cost and expense. (d) The Parties shall cooperate, if necessary and appropriate, with each other in gaining patent term extensions, including supplementary protection certificates and any other extensions that are now or become available in the Company future wherever applicable to Patent Rights that are applicable to the Product in the Licensed Territory. The Parties shall, if necessary and appropriate, use reasonable efforts to agree upon a joint strategy relating to patent term extensions, but, in the absence of mutual agreement with respect to any extension issue, a Patent Right shall then make no further use of any be extended in the Licensed Territory only as and if SpePharm elects in writing to extend such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent RightsRight.

Patent Prosecution and Maintenance. 6.1 The Company(a) shall, at its sole cost and expense, prosecute any and all patent applications claiming or disclosing any Invention conceived and/or reduced to practice by BRIDGE or ALGORX that are within the BRIDGE Patent Rights, the ALGORX Patent Rights and the Joint Patent Rights, or any Inventions described in Articles 8.3(a) and (b), to obtain patents thereon and to maintain all patents included therein. ****** shall diligently prosecute use patent counsel of its choice (except as to patents and maintain patent applications claiming or covering Inventions conceived and reduced to practice by ****** or jointly by ****** EXECUTION COPY and ******, for which ****** shall use the services of ****** patent counsel ******, ******, **, who shall consult regularly with patent counsel of ALGORX's choice). Interferences, nullification proceedings and oppositions before the Patent Rights as set forth in Appendix I hereto and Trademark Office shall be considered a part of the prosecution and maintenance of the BRIDGE Patent Rights. (as b) Within thirty (30) days of the same may be amended or supplemented from time Effective Date, BRIDGE shall disclose to time after ALGORX the date hereof), including, but not limited to, the filing complete texts of all pending patent applications for Improvementsencompassed by the BRIDGE Patent Rights, utilizing as well as all correspondence concerning the prosecution thereof and any information or correspondence received by BRIDGE concerning the institution of any interference, opposition, re-examination, reissue, revocation, nullification or any official proceeding involving the BRIDGE Patent Rights anywhere in the Territory. In the future, both Parties shall have the right to review all pending patent applications and other proceedings, and to make suggestions regarding the prosecution of such patent counsel as may be mutually agreed upon by applications, provided that ALGORX shall have the parties hereto. The Company agrees to keep the Licensor reasonably well informed final authority and discretion with respect to the status content of all patent filings and all prosecution strategy regarding such patents and patent applications. Patent issues, including patent strategies will be discussed by the JC and the JC shall be kept informed of the progress of any such applications, prosecutions and maintenance activities including and to consult the strategy used in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to each patent application. All disclosures and exchanges of information described in this Agreement. 6.2 The Company may, Article 8.1(b) shall be completed in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert to the Licensor. Prior to any such abandonment, the Company shall give the Licensor a manner designed at least 60 days notice and a reasonable opportunity to take over prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and all times to maintain confidentiality, any such Patent Rights under its own control and at its expense all attorney-client privilege, and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rightsevidentiary privileges.

Patent Prosecution and Maintenance. 6.1 The Company, at its sole cost and expense, Company shall diligently prosecute and maintain the Patent Rights as set forth in Appendix I Exhibit A hereto (as the same may be amended or supplemented from time to time after the date hereof), including, but not limited to, the filing of patent applications for Improvements, utilizing such patent counsel as which may be mutually agreed upon by the parties heretorequired. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's ’s comments and requests with respect thereto. The Company will provide Licensor, under confidentiality, with copies of all filings covering products incorporating the Technology. Company shall ensure that Licensor is simultaneously copied with Company on all communication from patent counsel, including attachments related to Patent Rights between Company and patent counsel. The Licensor shall be given the opportunity to review and comment upon the breadth and coverage of said patent applications, and patent counsel chosen by the Company and approved by Licensor, such approval not to be unreasonably withheld, shall use all due care to address and incorporate any comments offered by the Licensor. In addition, Licensor shall have the right to designate its own separate counsel, at Licensor’s expense, to review and comment upon the prosecution and drafting of any applications, prosecution or maintenance documents and said comments shall also be given due consideration. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application applications or issued patent comprising in the Patent Rights, in which case the Company shall make have no further royalty obligation to Licensor in respect of any Licensed Products and Licensed Processes, the manufacture, use or sale of which is covered by an issued claim of such abandoned Patent Rights and such rights shall revert to the LicensorRights. Prior to any such abandonment, the Company shall give the Licensor at least 60 sixty (60) days notice and a reasonable opportunity to take over prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed ProductsProducts and Licensed Processes, the manufacture, use or sale of which is covered by a valid and unexpired an issued claim of such Patent Rights. The Company agrees to cooperate in such activities, activities including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rights.

Patent Prosecution and Maintenance. 6.1 The CompanyLICENSOR shall have full control over prosecution and maintenance of the PATENTS. [***] costs of such prosecution and maintenance [***]; provided, at its sole cost however, that in the event any of such costs are [***]. LICENSOR shall deliver to LICENSEE copies of all patent applications, amendments, material related correspondence, and expense, shall diligently prosecute and maintain the Patent Rights as set forth in Appendix I hereto (as the same may be amended or supplemented from time to other material related matters for all LICENSOR PATENTS within a reasonable period of time after the date hereof), including, but not limited to, the filing of patent applications for Improvements, utilizing such patent counsel as may be mutually agreed upon items are received by the parties heretoor reported to LICENSOR. The Company agrees to keep the Licensor reasonably well informed LICENSOR shall take into consideration any comments or suggestions made by LICENSEE with respect to such prosecution and maintenance, but final decisions shall reside with LICENSOR. LICENSOR shall file foreign patent applications in those countries reasonably requested by LICENSEE or such other countries as LICENSOR may deem necessary and desirable. If LICENSOR elects not to file a patent application in a country in which LICENSEE has requested LICENSOR to file an application, within 120 days after such request or 30 days prior to the status and progress expiration of the statutory deadline for filing, then LICENSEE shall be free to do so at its expense; provided, however, that (i) while LICENSEE shall be the sole owner of any such applicationspatent applications filed by LICENSEE and any patents issuing thereon, prosecutions such patent applications and maintenance activities including patents shall be included within the definition of PATENTS hereunder, and to consult any LICENSED PRODUCTS sold in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company such countries shall make no further use of such Patent Rights and such rights shall revert be subject to the Licensor. Prior to any such abandonment, royalty obligations of this License Agreement and (ii) LICENSEE will keep LICENSOR advised of the Company shall give the Licensor at least 60 days notice and a reasonable opportunity to take over prosecution status of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and maintenance by providing LICENSOR with copies of all official communications with respect to maintain such patent applications and patents, and LICENSEE shall take into consideration any comments or suggestions made by LICENSOR with respect to such Patent Rights under its own control prosecution and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rightsmaintenance.

Patent Prosecution and Maintenance. 6.1 The Company9.2.1. As between the Parties, Licensor shall have the first right, but not the obligation, to, at its sole cost own costs and expenseexpenses and in its own name, shall diligently file, prosecute and maintain all patents and patent applications relating to the Licensed Technology, Licensor Improvements and Joint Improvements (the “Licensor Patent Rights as set forth in Appendix I hereto (as the same may be amended or supplemented from time Prosecution Matters”). Prior to time after the date hereof), including, but not limited to, the filing of new patent applications for Improvementsthe Licensed Technology, utilizing Licensor Improvements or Joint Improvements in the Territory, Licensor will use Commercially Reasonable Efforts to give Licensee [***] to review the drafts. Prior to submitting prosecution documents for the Licensed Technology, Licensor Improvements or Joint Improvements the Field in the Territory, to the extent practicable, Licensor will use Commercially Reasonable Efforts to give Licensee at least [***] to review the drafts, provided that Licensor shall provide Licensee with copies of any correspondence from the patent office in the Territory (including, without limitation, the China National Intellectual Property Administration) on the Licensed Technology or the Joint Improvements promptly, in no event later than [***] after Licensor receives such patent counsel as may be mutually agreed upon by the parties heretocorrespondence. The Company agrees to keep the Licensor reasonably well informed will consider and incorporate in good faith Licensee’s comments with respect to such drafts. If, during the status and progress of Term, Licensor (i) intends to allow any such applicationsLicensed Patent in the Territory to expire, prosecutions and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect (ii) intends to abandon any invention in any Licensed Patent in the Territory, (iii) decides not to seek patent application protection for, to allow to expire, or issued to abandon any invention in any Licensor Improvements in the Territory, or (iv) decides not to seek patent comprising protection for, to allow to expire, or to abandon any invention in Joint Improvements in the Patent RightsTerritory, in which case the Company shall make no further use Licensor will notify Licensee of such Patent Rights and such rights shall revert to the Licensor. Prior intention or decision at least [***] prior to any such abandonmentfiling or payment due date, the Company shall give the Licensor at least 60 days notice or any other date that requires action, and a reasonable opportunity to take over prosecution of such Patent Rights. In such event, the Licensor shall Licensee will then have the right, but not the obligation, to commence assume responsibility for the preparation, filing, prosecution or maintenance thereof at its own costs and expenses (for clarity, excluding any renumeration by Licensor to any inventors) in the name of Licensee (the “Licensee Step-In Right”). If Licensee exercises the Licensee Step-In Right pursuant to this Section 9.2.1, Licensor will assigned Licensor’s title, interest, and other rights in and to such Licensed Patent in the Territory, Licensor Improvement in the Territory, and Joint Improvements, as applicable, to Licensee, transfer the applicable patent files to Licensee or its designee, execute such documents, and perform such acts, at Licensee’s reasonable costs and expenses, as may be reasonably necessary to allow Licensee to initiate or continue such preparation, filing, prosecution or maintenance, and such Licensor Improvement shall be treated as part of Licensee Improvements for all purposes under this Agreement. 9.2.2. As between the Parties, Licensee shall have the first right, but not the obligation, to, at its own costs and expenses, file, prosecute and maintain all patents and patent applications relating to maintain the Licensee Improvements (the “Licensee Patent Prosecution Matters”). Prior to filing new patent applications outside the Territory, Licensee shall give Licensor at least [***] to review the drafts. Prior to submitting prosecution documents for the Licensee Improvements in the Field outside of the Territory, to the extent practicable, Licensee shall use Commercially Reasonable Efforts to give Licensor at least [***] to review the drafts, provided that Licensee shall provide Licensor with copies of any correspondence from the patent office outside of the Territory (including, without limitation, the United States Patent and Trademark Office, the European Patent Office, and the Japan Patent Office) on the Licensee Improvements promptly, in no event later than [***] after Licensee receives such correspondence. Licensee shall consider and incorporate in good faith Licensor’s comments with respect to such drafts. If, during the Term, Licensee (i) intends to allow any Patent covering any Licensee Improvement to expire outside of the Territory, or intends to otherwise abandon any such Patent Rights under outside of the Territory, or (ii) decides not to seek patent protection for any Licensee Improvement outside of the Territory, Licensee shall notify Licensor of such intention or decision before [***] prior to any filing or payment due date, or any other date that requires action, in connection with any such Patent, and Licensor will then have the right, but not the obligation, to assume responsibility for the preparation, filing, prosecution or maintenance thereof at its own control costs and expenses (for clarity, excluding any renumeration by Licensee to any inventors), in the name of Licensor (the “Licensor Step-In Right”). If Licensor exercises the Licensor Step-In Right, Licensee shall transfer the applicable patent files to Licensor or its designee and execute such documents and perform such acts, at Licensor’s reasonable expense, as may be reasonably necessary to allow Licensor or its expense designee to initiate or continue such preparation, filing, prosecution or maintenance, and such Licensee Improvement shall be treated as part of Licensor Improvements for all purposes under this Agreement. Notwithstanding the foregoing, effective upon the termination of this Agreement by Licensor pursuant to Section 13.2, 13.3, 13.4, 13.5 or 13.6 or by Licensee pursuant to Section 13.7, Licensor Step-In Right shall apply to the Territory as well. 9.2.3. To the extent a Party elects to conduct its Patent Prosecution Matters (for Licensor, the Licensor Patent Prosecution Matters, and for Licensee, the Licensee Patent Prosecution Matters) pursuant to Section 9.2.1 or Section 9.2.2, to the extent practicable, the responsible Party will use Commercially Reasonable Efforts to provide the other Party with reasonable opportunity to review and discuss. In the event that the responsible Party conducts its Patent Prosecution Matters, the responsible Party shall be responsible for all associated costs, fees and expenses incurred therefor. 9.2.4. Each Party agrees to cooperate with the other Party in the preparation, filing, and prosecution of any patents and patent applications relating to the Licensed Technology, Licensee Improvements, and Joint Improvements and in the obtaining and maintenance of any patent extensions, supplementary protection certificates, patent information registration, and the Company shall then make no further use like with respect to any such patents or patent applications. Such cooperation includes, but is not limited to, promptly informing the other Party of any matters coming to such Party’s attention that are reasonably expected to materially affect the preparation, filing, prosecution or maintenance of any such Patent Rights and shall have no royalty patents or other obligation to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rightspatent applications.

Patent Prosecution and Maintenance. 6.1 The CompanyAs between the parties, Astellas (or its licensor, as applicable) shall have the sole right, but not the obligation, to prepare, file, prosecute (including any interferences, extensions, reissue proceedings and reexaminations) and maintain the Astellas Patents, at its sole cost (subject to Section 6.3) and expenseby counsel of its own choice. Astellas shall provide Vical with reasonable opportunity to review and comment on any material document that Astellas intends to file or cause to be filed with the relevant intellectual property or patent office with respect to the Astellas Patents in the Territory, and Astellas shall diligently prosecute give due consideration to such comments provided by Vical. Vical agrees to reasonably cooperate in the preparation, filing and maintain prosecution of any Astellas Patents and in the obtaining and maintenance of any supplementary protection certificates and the like with respect to any Astellas Patent Rights as set forth claiming a Product being developed or commercialized by Vical or Sublicensees in Appendix I hereto (as the same may be amended or supplemented from time to time after the date hereof), includingTerritory. Such cooperation includes, but is not limited to, promptly informing Astellas of any matters coming to Vical’s attention that may affect the filing preparation, filing, prosecution or maintenance of patent applications for Improvementsany Astellas Patents. In the event that Astellas determines to abandon or cease prosecution or maintenance of any Astellas Patent in the Territory, utilizing Astellas shall provide reasonable prior written notice to Vical of such patent counsel as may be mutually agreed upon by intention to abandon or cease prosecution or maintenance. In such case, subject to the parties hereto. The Company agrees to keep the Licensor reasonably well informed rights of Astellas’ licensor with respect to any Astellas Patent licensed to Astellas by a Third Party, Vical may elect, upon written notice by Vical to Astellas, to cause Astellas to continue prosecution and/or maintenance of such Astellas Patent in the status Territory, at Vical’s sole cost and progress of expense and in accordance with Vical’s instructions for any such applications, prosecutions Astellas Patent. Vical shall reimburse Astellas for such costs and maintenance activities including expenses incurred by Astellas in connection with prosecuting and/or maintaining any such Astellas Patent within […***…] from the date of invoice for such costs and expenses by Astellas. In the event that Vical desires to consult in good faith with cease bearing the Licensor costs and take into account the Licensor's comments and requests expenses with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert to the Licensor. Prior to any such abandonmentAstellas Patent, the Company Vical shall give the Licensor at least 60 days provide reasonable prior written notice and a reasonable opportunity to take over prosecution Astellas of such Patent Rightsintention. In such eventcase, the Licensor Astellas shall have the right, but not the obligation, to commence or elect to continue such prosecution prosecuting and to maintain maintaining any such Astellas Patent Rights under at its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products, the manufacture, use or sale of which is covered by a valid and unexpired claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignments or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rightsexpense.

Patent Prosecution and Maintenance. 6.1 The Company7.2.1 As from the Effective Date, at its sole cost and expenseDebiopharm shall have the first right to prepare, shall diligently file, prosecute and maintain the Patent Rights as set forth in Appendix I hereto Patents using independent counsel selected by Debiopharm and agreed to by Curis, at Debiopharm’s sole expense. With respect to any Patents, Debiopharm shall (as a) consult with Curis and keep Curis fully informed of the same may be amended or supplemented from time to time after the date hereof), including, but not limited to, the filing progress of all patent applications for Improvementsand patents, utilizing including all issues relating to the preparation, filing, prosecution and maintenance of such Patents, (b) consult with Curis and keep Curis fully informed about Debiopharm’s patent counsel as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed strategy with respect to the status and progress such Patents, (c) provide to Curis advance copies of any such applicationsdocuments relevant to preparation, prosecutions filing, prosecution and maintenance activities including and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement. 6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patent Rights, in which case the Company shall make no further use of such Patent Rights and such rights shall revert Patents sufficiently in advance of filing to the Licensor. Prior to any such abandonment, the Company shall give the Licensor at least 60 days notice and allow Curis a reasonable opportunity to take over prosecution review and comment on such documents, (d) reasonably consider Curis’ comments on such patent filings, and (e) provide Curis with final copies of such documents. Debiopharm agrees to use Reasonable Commercial Efforts to obtain commercially reasonable patent protection in the best interest of Curis and Debiopharm. Debiopharm shall control and shall bear any and all costs regarding the filing, prosecution and maintenance of the Patents in the Territory, including but not limited to filing applications for, and obtaining, patent term extensions, supplemental protection certificates (SPC) and the like relating to the Product and in each country of the Territory where Debiopharm reasonably considers that it is appropriate to do so. If Debiopharm decides to abandon or not maintain any Patent Rightsin the Territory, then Debiopharm shall provide Curis with sixty (60) days’ prior written notice of such decision (or such other longer period of time reasonably necessary to allow Curis to assume such responsibilities, at the sole discretion of Debiopharm). In such event, the Licensor Curis shall have the right, but not the obligationat its option, to commence or continue such control the filing, prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use and/or maintenance of any such Patent, at its own expense. Curis shall inform Debiopharm of its decision to file, prosecute or maintain a Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products, the manufacturecountry. Should Debiopharm exploit, use or sale of which is covered by benefit from such a valid and unexpired claim Patent in a country where Curis has filed, prosecuted and/or maintained such Patent at its own expense, Debiopharm shall reimburse Curis for all reasonable costs pertaining to the filing, prosecution and/or maintenance of such Patent Rights. The Company in that country upon Debiopharm’s use, exploitation or benefit of such Patent in such country. 7.2.2 Each Party agrees to cooperate fully in such activitiesthe preparation, including execution filing, prosecution and maintenance of Patents under this Agreement and in the obtaining and maintenance of any assignments patent extensions, supplementary protection certificates and the like with respect to any Patents. Such cooperation includes, but is not limited to, promptly informing the other Party of any matters coming to such Party’s attention that may affect the preparation, filing, prosecution or other documents necessary to enable the Licensor to obtain and retain sole ownership and control maintenance of such Patent Rightsany Patents.