Common use of Patent Prosecution and Patent Costs Clause in Contracts

Patent Prosecution and Patent Costs. 11.1 Licensee shall have the right to apply for, prosecute and maintain during the term of this Agreement, the Licensed Patents. Caltech shall provide Licensee with timely disclosures regarding Improvements and potential Improvements. The application filings, prosecution, maintenance and payment of all fees and expenses, including legal fees, relating to such Licensed Patents shall be the responsibility of Licensee, provided that Licensee shall pay for all reasonable fees and expenses, including reasonable legal fees, incurred in such application filings, prosecution and maintenance. Caltech shall provide Licensee with all information necessary or useful for the filing and prosecution of such Licensed Patents and shall cooperate fully with Licensee so that Licensee may establish and maintain such rights. Patent attorneys chosen by Licensee shall handle all patent filings and prosecutions, on behalf of Caltech, provided, however, Caltech shall be entitled to review and comment upon and approve all actions undertaken in the prosecution of all patents and applications. Caltech shall provide any comments or approvals hereunder promptly. 11.2 In the event Licensee declines to apply for, prosecute or maintain any Licensed Patents, Caltech shall have the right to pursue the same at Caltech’s expense and Licensee shall have no rights under Caltech’s interest therein. If Licensee decides not to apply for, prosecute or maintain any Licensed Patents, Licensee shall give sufficient and timely notice to Caltech so as to permit Caltech to apply for, prosecute and maintain such Licensed Patents. In such event, Licensee shall provide Caltech with all information necessary or useful for the filing and prosecution of such Licensed Patents and shall cooperate fully with Caltech so that Caltech may establish and maintain such rights. 11.3 Licensee shall reimburse Caltech for all reasonable out-of-pocket expenses incurred by Caltech for the filing for, prosecution and maintenance of the Licensed Patents Rights. Such expenses shall be reimbursed following receipt by Licensee from Caltech of (i) an invoice covering such fees (including copies of invoices for legal fees describing the legal services performed in reasonable detail) and (ii) reasonably satisfactory evidence that such fees were paid. Initially, payments shall be made in six (6) equal quarterly installments due within ten days after the end of the first six (6) full calendar quarters, effective twenty-four (24) months from the Effective Date of this Agreement. Subsequent payments under this Section 11.3 shall be made to Caltech within sixty (60) days following receipt by Licensee from Caltech of (i) an invoice covering such fees (including copies of invoices for legal fees describing the legal services performed in reasonable detail) and (ii) reasonably satisfactory evidence that such fees were paid. If Licensee elects to no longer pay the expenses of a patent or patent application within the Licensed Patents in any country, Licensee shall notify Caltech not less than thirty (30) days prior to such action. In the event that Licensee elects not to pay such expenses the license granted to Licensee hereunder shall terminate. [***] of patent expenses paid by Licensee in conjunction with foreign patent costs shall be creditable against earned royalties due Caltech in the respective territory covered by the patent or patents that are foreign filed.

Patent Prosecution and Patent Costs. 11.1 Licensee shall have the right to apply for, prosecute and maintain during the term of this Agreement, the Licensed Patents. Caltech shall provide Licensee with timely disclosures regarding Improvements and potential Improvements. The application filings, prosecution, maintenance and payment of all fees and expenses, including legal fees, relating to such Licensed Patents shall be the responsibility of Licensee, provided that Licensee shall pay for all reasonable fees and expenses, including reasonable legal fees, incurred in such application filings, prosecution and maintenance. Caltech shall provide Licensee with all information necessary or useful for the filing and prosecution of such Licensed Patents and shall cooperate fully with Licensee so that Licensee may establish and maintain such rights. Patent attorneys [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. Confidential Treatment Requested by Fluidigm Corporation chosen by Licensee shall handle all patent filings and prosecutions, on behalf of Caltech, provided, however, Caltech shall be entitled to review and comment upon and approve all actions undertaken in the prosecution of all patents and applications. Caltech shall provide any comments or approvals hereunder promptly. 11.2 In the event Licensee declines to apply for, prosecute or maintain any Licensed Patents, Caltech shall have the right to pursue the same at Caltech’s expense and Licensee shall have no rights under Caltech’s interest therein. If Licensee decides not to apply for, prosecute or maintain any Licensed Patents, Licensee shall give sufficient and timely notice to Caltech so as to permit Caltech to apply for, prosecute and maintain such Licensed Patents. In such event, Licensee shall provide Caltech with all information necessary or useful for the filing and prosecution of such Licensed Patents and shall cooperate fully with Caltech so that Caltech may establish and maintain such rights. 11.3 Licensee shall reimburse Caltech for all reasonable out-of-pocket expenses incurred by Caltech for the filing for, prosecution and maintenance of the Licensed Patents Rights. Such expenses shall be reimbursed following receipt by Licensee from Caltech of (i) an invoice covering such fees (including copies of invoices for legal fees describing the legal services performed in reasonable detail) and (ii) reasonably satisfactory evidence that such fees were paid. Initially, payments shall be made in six (6) equal quarterly installments due within ten days after the end of the first six (6) full calendar quarters, effective twenty-four (24) months from the Effective Date of this Agreement. Subsequent payments under this Section 11.3 shall be made to Caltech within sixty (60) days following receipt by Licensee from Caltech of (i) an invoice covering such fees (including copies of invoices for legal fees describing the legal services performed in reasonable detail) and (ii) reasonably satisfactory evidence that such fees were paid. If Licensee elects to no longer pay the expenses of a patent or patent application within the Licensed Patents in any country, Licensee shall notify Caltech not less than thirty (30) days prior to such action. In the event that Licensee elects not to pay such expenses the license granted to Licensee hereunder shall terminate. [***] of patent expenses paid by Licensee in conjunction with foreign patent costs shall be creditable against earned royalties due Caltech in the respective territory covered by the patent or patents that are foreign filed.. [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. Confidential Treatment Requested by Fluidigm Corporation

Patent Prosecution and Patent Costs. 11.1 Licensee shall have the right to apply for, prosecute and maintain during the term of this Agreement, the Licensed Patents. Caltech shall provide Licensee with timely disclosures regarding Improvements and potential Improvements. The application filings, prosecution, maintenance and payment of all fees and expenses, including legal fees, relating to such Licensed Patents shall be the responsibility of Licensee, provided that Licensee shall pay for all reasonable fees and expenses, including reasonable legal fees, incurred in such application filings, prosecution and maintenance. Caltech shall provide Licensee with all information necessary or useful for the filing and prosecution of such Licensed Patents and shall cooperate fully with Licensee so that Licensee may establish and maintain such rights. Patent attorneys [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. chosen by Licensee shall handle all patent filings and prosecutions, on behalf of Caltech, provided, however, Caltech shall be entitled to review and comment upon and approve all actions undertaken in the prosecution of all patents and applications. Caltech shall provide any comments or approvals hereunder promptly. 11.2 In the event Licensee declines to apply for, prosecute or maintain any Licensed Patents, Caltech shall have the right to pursue the same at Caltech’s expense and Licensee shall have no rights under Caltech’s interest therein. If Licensee decides not to apply for, prosecute or maintain any Licensed Patents, Licensee shall give sufficient and timely notice to Caltech so as to permit Caltech to apply for, prosecute and maintain such Licensed Patents. In such event, Licensee shall provide Caltech with all information necessary or useful for the filing and prosecution of such Licensed Patents and shall cooperate fully with Caltech so that Caltech may establish and maintain such rights. 11.3 Licensee shall reimburse Caltech for all reasonable out-of-pocket expenses incurred by Caltech for the filing for, prosecution and maintenance of the Licensed Patents Rights. Such expenses shall be reimbursed following receipt by Licensee from Caltech of (i) an invoice covering such fees (including copies of invoices for legal fees describing the legal services performed in reasonable detail) and (ii) reasonably satisfactory evidence that such fees were paid. Initially, payments shall be made in six (6) equal quarterly installments due within ten days after the end of the first six (6) full calendar quarters, effective twenty-four (24) months from the Effective Date of this Agreement. Subsequent payments under this Section 11.3 shall be made to Caltech within sixty (60) days following receipt by Licensee from Caltech of (i) an invoice covering such fees (including copies of invoices for legal fees describing the legal services performed in reasonable detail) and (ii) reasonably satisfactory evidence that such fees were paid. If Licensee elects to no longer pay the expenses of a patent or patent application within the Licensed Patents in any country, Licensee shall notify Caltech not less than thirty (30) days prior to such action. In the event that Licensee elects not to pay such expenses the license granted to Licensee hereunder shall terminate. [***] of patent expenses paid by Licensee in conjunction with foreign patent costs shall be creditable against earned royalties due Caltech in the respective territory covered by the patent or patents that are foreign filed. [***] Information has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.