Common use of Patent Prosecution and Maintenance Clause in Contracts

Patent Prosecution and Maintenance. (a) Licensed Patents. Tracon shall have the sole (subject to Section 8.2(a)(ii)) right, but not the obligation, at its own expense, to control the preparation, filing, prosecution (including any interferences, reissue proceedings and reexaminations) and maintenance of the Licensed Patents. Tracon shall keep Santen reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of Licensed Patents including the countries in the Territory in which it intends to file, maintain or abandon a given Licensed Patent. Tracon will notify Santen of all warning letters, conflict proceedings, reexaminations, reissuance, oppositions, revocation proceedings or any other material challenge relating to a given Licensed Patent. Tracon will consult with, and consider in good faith the requests and suggestions of, Santen with respect to strategies for filing and prosecuting Licensed Patents. In the event that Tracon desires to abandon or cease prosecution or maintenance of any Licensed Patent, Tracon shall provide reasonable prior written notice to Santen of such intention (which notice shall, in any event, be given no later than sixty (60) days prior to the next deadline for any action that may be taken with respect to such Patent with the applicable patent office), and upon Santen’s written election provided no later than thirty (30) days after such notice from Tracon, Tracon shall continue prosecution and/or maintenance of such Patent at Santen’s direction and expense; provided, that Santen shall be allowed to offset its out-of-pocket costs for prosecuting and maintaining such Patents from the royalty and other payments due to Tracon under this Agreement. If Santen does not provide such election within thirty (30) days after such notice from Tracon or fails to pay for prosecution or maintenance of any Licensed Patent, if any, with respect to which it has previously made such election, Tracon may, in its sole discretion, continue prosecution and maintenance of such Patent or discontinue prosecution and maintenance of such Patent. The provisions of this Section 8.2(a) are subject to the rights of RPCI Licensor under the RPCI Agreement with respect to the RPCI Patents. With respect to Licensed Patents that have issued or may issue, a statement referencing the exclusive license granted to Santen pursuant to Section 2.1 shall be registered with the patent office in the countries designated by Santen, at Santen’s cost, as soon as is practically possible after the issuance of the respective Licensed Patents. Tracon shall execute, and shall use Commercially Reasonable Efforts to cause RPCI Licensor to execute, such documents and instruments as may be required to effect the registration of such statement or otherwise cooperate with Santen in connection with the registration of such statement with the respective patent offices where required or permitted by Applicable Laws.

Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 8 shall control the prosecution of any patent application and maintenance of any patent included within Licensed Patent Rights. TSRI shall (a) Licensed Patents. Tracon shall have the sole (subject to Section 8.2(a)(ii)) right, but not the obligation, at its own expense, to direct and control the preparation, filing and prosecution of the United States and foreign patent applications within Licensed Patent Rights (including without limitation any reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences and foreign oppositions); and (b) maintain the patents issuing therefrom; in each case, using TSRI’s Office of Patent Counsel (“OPC”) or outside patent counsel selected by TSRI and approved by Licensee in writing, which approval shall not be unreasonably withheld, and consistent with the requirements of this Section 8.1. The parties shall mutually agree in advance, on a Licensed Patent Right-by-Licensed Patent Right basis, whether TSRI’s OPC or independent counsel will be principally responsible for filing, prosecution (including any interferences, reissue proceedings and reexaminations) and maintenance of a Licensed Patent Right, it being understood that if the Licensed Patentsparties agree that external patent counsel will be principally responsible, TSRI shall have the right, at its sole discretion, to utilize TSRI’s OPC in addition to (i.e., in support of and to direct) such independent counsel’s patent filing, prosecution and maintenance activities. Tracon shall keep Santen reasonably informed of progress The reasonable and documented fees and expenses with regard to the preparation, filing and prosecution of patent applications and maintenance of patents (including without limitation inter partes proceedings) included within Licensed Patent Rights (“Patent Costs”) shall be paid as set forth below. Licensee shall have full rights of consultation with TSRI and such outside patent counsel on all matters relating to Licensed Patent Rights. TSRI shall consult, and shall instruct its counsel to consult, with Licensee as to the preparation, filing, prosecution and maintenance of the Licensed Patents including the countries in the Territory in which it intends to filePatent Rights (including, maintain or abandon a given Licensed Patent. Tracon will notify Santen of all warning letterswithout limitation, conflict proceedingsany reissues, reexaminations, reissuanceappeals to appropriate patent offices and/or courts, interferences and foreign oppositions, revocation proceedings ) reasonably prior to any deadline or action with the U.S. Patent & Trademark Office or any other material challenge relating to a given Licensed Patent. Tracon will consult withforeign patent office, and shall furnish to Licensee copies of all relevant documents reasonably in advance of such consultation, consider in good faith the requests Licensee’s comments and suggestions ofwith regard to such preparation, Santen with respect filing, prosecution and/or maintenance (including without limitation any inter partes proceedings) of the patent applications and/or patents within Licensed Patent Rights, and use its reasonable efforts to strategies for filing implement all reasonable and prosecuting Licensed Patents. In timely requests made by Licensee; provided, however, that in the event that Tracon desires to abandon or cease of a disagreement between TSRI and Licensee on any such patent prosecution or maintenance matters, TSRI shall have final decision-making authority over all such patent matters. Licensee shall have the right, but not the obligation, to be present at any court or patent office proceedings relating to Licensed Patent Rights. Provided that Licensee is not in material breach of any Licensed Patent, Tracon shall provide reasonable prior written notice to Santen of such intention (which notice shall, in any event, be given no later than sixty (60) days prior to the next deadline for any action that may be taken with respect to such Patent with the applicable patent office), and upon Santen’s written election provided no later than thirty (30) days after such notice from Tracon, Tracon shall continue prosecution and/or maintenance of such Patent at Santen’s direction and expense; provided, that Santen shall be allowed to offset its out-of-pocket costs for prosecuting and maintaining such Patents from the royalty and other payments due to Tracon obligations under this Agreement, TSRI shall not abandon any patent or patent application within the Licensed Patent Rights without Licensee’s prior written consent. If Santen does not provide such election within thirty (30) days after such notice from Tracon or fails to pay for prosecution or maintenance of any Licensed Patent, if any, with respect to which it has previously made such election, Tracon may, in its sole discretion, continue prosecution *** Confidential material redacted and maintenance of such Patent or discontinue prosecution and maintenance of such Patent. The provisions of this Section 8.2(a) are subject to the rights of RPCI Licensor under the RPCI Agreement with respect to the RPCI Patents. With respect to Licensed Patents that have issued or may issue, a statement referencing the exclusive license granted to Santen pursuant to Section 2.1 shall be registered filed separately with the patent office in the countries designated by Santen, at Santen’s cost, as soon as is practically possible after the issuance of the respective Licensed Patents. Tracon shall execute, and shall use Commercially Reasonable Efforts to cause RPCI Licensor to execute, such documents and instruments as may be required to effect the registration of such statement or otherwise cooperate with Santen in connection with the registration of such statement with the respective patent offices where required or permitted by Applicable LawsCommission.

Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 8 shall control the prosecution of any patent application and maintenance of any patent included within Licensed Patent Rights. TSRI shall (a) Licensed Patents. Tracon shall have the sole (subject to Section 8.2(a)(ii)) right, but not the obligation, at its own expense, to direct and control the preparation, filing and prosecution of the United States and foreign patent applications within Licensed Patent Rights (including without limitation any reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences and foreign oppositions); and (b) maintain the patents issuing therefrom; in each case, using TSRI’s Office of Patent Counsel (“OPC”) or outside patent counsel selected by TSRI and approved by Company in writing, which approval shall not be unreasonably withheld, and consistent with the requirements of this Section 8.1. The parties shall mutually agree in advance, on a Licensed Patent Right-by-Licensed Patent Right basis, whether TSRI’s OPC or independent counsel will be principally responsible for filing, prosecution (including any interferences, reissue proceedings and reexaminations) and maintenance of a Licensed Patent Right, it being understood that if the Licensed Patentsparties agree that external patent counsel will be principally responsible, TSRI shall have the right, at its sole discretion, to utilize TSRI’s OPC in addition to (i.e., in support of and to direct) such independent counsel’s patent filing, prosecution and maintenance activities. Tracon shall keep Santen reasonably informed of progress The reasonable and documented fees and expenses with regard to the preparation, filing and prosecution of patent applications and maintenance of patents (including without limitation inter partes proceedings) included within Licensed Patent Rights (“Patent Costs”) shall be paid as set forth below. Company shall have full rights of consultation with TSRI and such outside patent counsel on all matters relating to Licensed Patent Rights. TSRI shall consult, and shall instruct its counsel to consult, with Company as to the preparation, filing, prosecution and maintenance of the Licensed Patents including the countries in the Territory in which it intends to filePatent Rights (including, maintain or abandon a given Licensed Patent. Tracon will notify Santen of all warning letterswithout limitation, conflict proceedingsany reissues, reexaminations, reissuanceappeals to appropriate patent offices and/or courts, interferences and foreign oppositions, revocation proceedings ) reasonably prior to any deadline or action with the U.S. Patent & Trademark Office or any other material challenge relating to a given Licensed Patent. Tracon will consult withforeign patent office, and shall furnish to Company copies of all relevant documents reasonably in advance of such consultation, consider in good faith the requests Company’s comments and suggestions ofwith regard to such preparation, Santen with respect filing, prosecution and/or maintenance (including without limitation any inter partes proceedings) of the patent applications and/or patents within Licensed Patent Rights, and use its reasonable efforts to strategies for filing implement all reasonable and prosecuting Licensed Patents. In timely requests made by Company; provided, however, that in the event that Tracon desires to abandon or cease of a disagreement between TSRI and Company on any such patent prosecution or maintenance matters, TSRI shall have final decision-making authority over all such patent matters. Company shall have the right, but not the obligation, to be present at any court or patent office proceedings relating to Licensed Patent Rights. Provided that Company is not in material breach of any Licensed Patent, Tracon shall provide reasonable prior written notice to Santen of such intention (which notice shall, in any event, be given no later than sixty (60) days prior to the next deadline for any action that may be taken with respect to such Patent with the applicable patent office), and upon Santen’s written election provided no later than thirty (30) days after such notice from Tracon, Tracon shall continue prosecution and/or maintenance of such Patent at Santen’s direction and expense; provided, that Santen shall be allowed to offset its out-of-pocket costs for prosecuting and maintaining such Patents from the royalty and other payments due to Tracon obligations under this Agreement. If Santen does , TSRI shall not provide such election abandon any patent or patent application within thirty (30) days after such notice from Tracon or fails to pay for prosecution or maintenance of any the Licensed Patent, if any, with respect to which it has previously made such election, Tracon may, in its sole discretion, continue prosecution and maintenance of such Patent or discontinue prosecution and maintenance of such Patent. The provisions of this Section 8.2(a) are subject to the rights of RPCI Licensor under the RPCI Agreement with respect to the RPCI Patents. With respect to Licensed Patents that have issued or may issue, a statement referencing the exclusive license granted to Santen pursuant to Section 2.1 shall be registered with the patent office in the countries designated by Santen, at SantenRights without Company’s cost, as soon as is practically possible after the issuance of the respective Licensed Patents. Tracon shall execute, and shall use Commercially Reasonable Efforts to cause RPCI Licensor to execute, such documents and instruments as may be required to effect the registration of such statement or otherwise cooperate with Santen in connection with the registration of such statement with the respective patent offices where required or permitted by Applicable Lawsprior written consent.

Patent Prosecution and Maintenance. (a) Licensed Patents7.4.1. Tracon LICENSEE shall have the sole (subject to Section 8.2(a)(ii)) right, but not the obligation, at its own expense, to control the preparation, be responsible for filing, prosecution prosecuting (including in connection with any interferencesreexaminations, reissue proceedings oppositions and reexaminationsthe like) and maintenance of maintaining the Licensed PatentsPatent Rights in the Territory. Tracon LICENSEE shall keep Santen reasonably informed of progress file, prosecute and maintain the Patent Rights using qualified outside patent counsel and foreign patent [***] Certain information in this document has been omitted and filed separately with regard the Securities and Exchange Commission. Confidential treatment has been requested with respect to the preparation, omitted portions. associates selected by LICENSEE; provided that LICENSEE identifies such counsel for PFIZER in advance and PFIZER consents to such counsel (such consent not to be unreasonably withheld or delayed). LICENSEE shall be responsible for all costs and expenses in connection with such filing, prosecution and maintenance of Licensed Patents including the countries in the Territory in which it maintenance; provided that if LICENSEE intends to abandon, or not file a patent application included in, any of the Patent Rights in any given country for any purposes, LICENSEE shall provide PFIZER with a written notice of such intent at least [***] in advance of the relevant deadline. In such case: (a) PFIZER will provide a written response to LICENSEE at least [***] in advance of the relevant deadline if PFIZER wishes, or wishes to allow a Third Party to, file, prosecute and maintain or abandon a given Licensed Patent. Tracon will notify Santen of all warning letters, conflict proceedings, reexaminations, reissuance, oppositions, revocation proceedings or any other material challenge relating to a given Licensed Patent. Tracon will consult with, and consider (in good faith the requests and suggestions of, Santen with respect to strategies for filing and prosecuting Licensed Patents. In the event that Tracon desires to abandon or cease prosecution or maintenance of any Licensed Patent, Tracon shall provide reasonable prior written notice to Santen of such intention (which notice shall, in any event, be given no later than sixty (60its sole discretion) days prior to the next deadline for any action that may be taken with respect to such Patent with Right in such country; (b) if PFIZER provides the applicable patent office)affirmative notice under clause (a) above, and upon Santen’s written election provided no later than thirty (30) days after such notice from Traconthe LICENSEE shall promptly provide all files related to filing, Tracon shall continue prosecution and/or maintenance of such Patent at Santen’s direction and expense; provided, that Santen shall be allowed to offset its out-of-pocket costs for prosecuting and maintaining such Patents from Patent Right to counsel designated by PFIZER; (c) upon completion of the royalty and other payments due to Tracon under this Agreement. If Santen does not provide such election within thirty (30) days after such notice from Tracon or fails to pay for prosecution or maintenance of any Licensed Patent, if any, with respect to which it has previously made such election, Tracon may, in its sole discretion, continue prosecution and maintenance transfer of such files under clause (b), LICENSEE shall no longer be responsible for the costs and expenses relating to filing, prosecuting and maintaining (as applicable) such Patent or discontinue prosecution Right in such country; and maintenance of such Patent. The provisions of this Section 8.2(a(d) are subject to the rights of RPCI Licensor under the RPCI Agreement with respect to the RPCI Patents. With respect to Licensed Patents that have issued or may issueterms “Patent Rights” and “Future Patent Rights,” as applicable, a statement referencing the exclusive license granted to Santen pursuant to Section 2.1 automatically shall be registered with the patent office in the countries designated by Santen, at Santen’s cost, as soon as is practically possible after the issuance of the respective Licensed Patents. Tracon shall execute, and shall use Commercially Reasonable Efforts to cause RPCI Licensor to execute, such documents and instruments as may be required to effect the registration of such statement or otherwise cooperate with Santen in connection with the registration of such statement with the respective patent offices where required or permitted by Applicable Laws[***].

Patent Prosecution and Maintenance. Subject to Pfizer’s rights set forth in Section 7.4.3 below, (a) Licensed Patents. Tracon shall have until the sole earlier of (subject i) the six (6) month anniversary of the Effective Date and (ii) such time as Licensee provides Pfizer written notice that it desires to assume the activities under Section 8.2(a)(ii7.4.1(b) (the “Initial Period”)) right, but not the obligationPfizer will continue to file, at its own expense, to control the preparation, filing, prosecution prosecute (including in connection with any interferencesreexaminations, reissue proceedings oppositions, inter partes reviews and reexaminationsthe like) and maintenance of maintain the Active Cases in the Licensed Patents. Tracon Patent Rights in the Territory, in Pfizer’s name on behalf of Licensee and Licensee shall keep Santen reasonably informed bear all of progress Pfizer’s reasonable and documented out-of- pocket expenses with regard respect to the preparation, such filing, prosecution and maintenance maintenance, and (b) upon expiration of Licensed Patents the Initial Period, (i) Licensee will control the filing, prosecuting (including the countries in the Territory in which it intends to file, maintain or abandon a given Licensed Patent. Tracon will notify Santen of all warning letters, conflict proceedings, connection with any reexaminations, reissuance, oppositions, revocation proceedings or inter partes reviews and the like) and maintaining of the Licensed Patent Rights (including, for avoidance of doubt, any other material challenge relating Arising Patent Rights) in the Territory, in Pfizer’s name, at Licensee’s own cost and expense using qualified patent counsel, foreign agents and annuity service providers as necessary, in each case reasonably acceptable to a given Licensed Patent. Tracon will consult withPfizer and (ii) Pfizer shall, and consider in good faith shall ensure that its patent counsel, foreign agents and annuity service providers promptly transfer all documentation related to the requests Licensed Patent Rights to Licensee or its applicable designee(s). Following the Initial Period and suggestions ofduring the Term, Santen with respect to strategies for filing and prosecuting Licensed Patents. In the event that Tracon desires to abandon or cease prosecution or maintenance Licensee will provide notice of any Licensed Patent, Tracon shall provide reasonable prior written notice to Santen substitution of such intention (which notice shallcounsel, in any eventforeign agents, be given no later than sixty (60) days prior to the next deadline for any action that may be taken with respect to such Patent with the applicable patent office), and upon Santen’s written election provided no later than thirty (30) days after such notice from Tracon, Tracon shall continue prosecution and/or maintenance of such Patent at Santen’s direction and expense; provided, that Santen shall be allowed to offset its out-of-pocket costs for prosecuting and maintaining such Patents from the royalty and other payments due to Tracon under this Agreement. If Santen does not provide such election or annuity service providers within thirty (30) days after such notice substitution. During the Initial Period, Pfizer will (y) promptly provide Licensee with a copy of all substantive communications relating to such Licensed Patent Rights that are received from Tracon or fails to pay for prosecution or maintenance of any Licensed Patent, if any, with respect to which it has previously made such election, Tracon may, in its sole discretion, continue prosecution and maintenance of such Patent or discontinue prosecution and maintenance of such Patent. The provisions of this Section 8.2(a) are subject to the rights of RPCI Licensor under the RPCI Agreement with respect to the RPCI Patents. With respect to Licensed Patents that have issued or may issue, a statement referencing the exclusive license granted to Santen pursuant to Section 2.1 shall be registered with the patent office in or patent counsel of record or foreign associate and (z) allow Licensee a reasonable opportunity and reasonable time to review and comment on any proposed submissions to any patent office and implement any reasonable comments provided by Licensee to Pfizer. After the countries designated Initial Period, (A) before each patent application or other submission is filed, Licensee will provide Pfizer a reasonable opportunity to review and comment thereon and will reasonably consider any comments provided by SantenPfizer to Licensee, at Santen’s cost, as soon as is practically possible after the issuance and (B) Licensee will keep Pfizer reasonably informed of the respective status of the Licensed Patents. Tracon shall execute, and shall use Commercially Reasonable Efforts Patent Rights by timely providing Pfizer copies of significant communications relating to cause RPCI Licensor to execute, such documents and instruments as may be required to effect the registration Licensed Patent Rights that are received from any patent office or patent counsel of such statement record or otherwise cooperate with Santen in connection with the registration of such statement with the respective patent offices where required or permitted by Applicable Lawsforeign associate.

Patent Prosecution and Maintenance. (a) Licensed Patents. Tracon shall have the sole (subject 14.2.1 Subject to Section 8.2(a)(ii)) right14.2.1, but not the obligation, at its own expense, to control the preparation, filing, prosecution (including any interferences, reissue proceedings and reexaminations) and maintenance of the Licensed Patents. Tracon Aquestive shall keep Santen reasonably informed of progress with regard to be responsible for the preparation, filing, prosecution and maintenance of Licensed the Aquestive Patents including having claims which cover the countries in Product (herein after referred to as the Territory in which it intends to file“Patent Actions”). The cost of such preparation, maintain or abandon a given Licensed Patentfiling, prosecution and maintenance of the Aquestive Patents, shall be borne by Aquestive. Tracon will notify Santen Haisco shall be responsible for the preparation, filing, prosecution and maintenance of all warning letterspatents and patent applications included in Haisco New IP (“Haisco Patents”). The cost of such preparation, conflict proceedingsfiling, reexaminationsprosecution and maintenance of the Haisco Patents, reissuance, oppositions, revocation proceedings or any other material challenge relating to a given Licensed Patentshall be borne by Haisco. Tracon will consult with, and consider in good faith the requests and suggestions of, Santen with respect to strategies for filing and prosecuting Licensed Patents. 14.2.2 In the event that Tracon desires Aquestive determines to abandon or cease prosecution or maintenance of any Licensed Aquestive Patent (an “Abandoned Patent”), Tracon shall Aquestive will provide reasonable prior Haisco written notice to Santen of such intention thereof at least thirty (which notice shall, in any event, be given no later than sixty (6030) days prior before the applicable deadline (“Notice to the next deadline for any action that may be taken with respect Abandon”) and provide to Haisco information it reasonably requests relating to such Patent with the applicable patent office)Aquestive Patent. In such case, and upon SantenHaisco’s written election provided no later than thirty (30) days after such notice from TraconAquestive (“Step-In Notice”), Tracon Haisco shall continue prosecution and/or maintenance of have the right to assume the Patent Actions with respect to such Aquestive Patent at SantenHaisco’s direction and expense; provided, that Santen shall be allowed to offset its out-of-pocket costs for prosecuting and maintaining such Patents from the royalty and other payments due to Tracon under this Agreementexpense (“Step In Rights”). If Santen Haisco does not provide such election Step-In Notice within thirty (30) days after such notice from Tracon or fails receipt of a Notice to pay for prosecution or maintenance of any Licensed PatentAbandon, if any, with respect to which it has previously made such election, Tracon Aquestive may, in its sole discretion, continue the Patent Actions with respect to such Aquestive Patent or discontinue the Patent Actions with respect to such Aquestive Patent. 14.2.3 If either Party decides to file a Joint Patent, such Party will notify the other Party of such determination and within fourteen (14) days of such notification, the Parties will discuss in good faith the joint preparation, filing, prosecution and maintenance of such Patent or discontinue all patents and patent applications within the Joint Patents. 14.2.4 The Parties shall cooperate at the requesting Party’s expense, with respect to the preparation, filing, prosecution and maintenance of such Patent. The provisions any patents claiming New IP and in the obtaining and maintenance of this Section 8.2(a) are subject to any extensions, supplementary protection certificates and the rights of RPCI Licensor under the RPCI Agreement like with respect to any patents claiming New IP. Such cooperation includes promptly informing the RPCI Patentsother Party of any matters coming to such Party’s attention that may affect the any associated Patent Actions. With respect to Licensed Patents that have issued or may issue, a statement referencing the exclusive license granted to Santen pursuant to Section 2.1 shall be registered with the patent office in the countries designated by Santen, at Santen’s cost, as soon as is practically possible after the issuance of the respective Licensed Patents. Tracon shall execute, and shall use Commercially Reasonable Efforts to cause RPCI Licensor to execute, such documents and instruments as may be required to effect the registration of such statement or otherwise cooperate with Santen in connection with the registration of such statement with the respective patent offices where required or permitted by Applicable Laws.14.3