Common use of PATENT PROSECUTION AND PROTECTION Clause in Contracts

PATENT PROSECUTION AND PROTECTION. 2.1 Caltech may file patent applications covering the Patent Rights and will provide to The University of Chicago all serial numbers and filing dates, together with copies of all the applications, including copies of all office actions, responses and all other communications from the U.S. Patent and Trademark Office. 2.2 Caltech will, after consulting with The University of Chicago, and if necessary after consulting with Licensee, make an election whether, when, and in which countries, it wishes to file foreign patent applications. Caltech will notify The University of Chicago in writing, of its election regarding foreign filing. If foreign patent applications are filed, Caltech will provide to The University of Chicago copies of foreign patent applications and patent office actions as The University of Chicago may request in the course of prosecution. 2.3 Caltech will record assignments of domestic Patent Rights in the United States Patent and Trademark Office and will provide The University of Chicago with a photocopy of each recorded assignment. The University of Chicago inventors will assign to The University of Chicago and Caltech inventors will assign to Caltech. 2.4 Notwithstanding any other provision of this Agreement, Caltech will not abandon the prosecution of any patent application (except for purposes of filing continuation applications) or the maintenance of any Patent Rights without prior written notice to The University of Chicago in which case The University of Chicago may assume responsibility of the same. 2.5 Caltech will promptly provide The University of Chicago with copies of all patents issued under Patent Rights. PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO AN APPLICATION FOR CONFIDENTIAL TREATMENT UNDER RULE 406 OF THE SECURITIES ACT; [***] DENOTES OMISSIONS. 2.6 Caltech will invoice The University of Chicago for reimbursement of one-third of the unreimbursed costs of filing and prosecuting Patent Rights during the term of this Agreement, or, in the event a Licensee is to pay for Patent Prosecution, Caltech will invoice the Licensee for all the costs of filing and prosecution Patent Rights. Invoices of costs will be due 60 days from receipt.

PATENT PROSECUTION AND PROTECTION. 2.1 Caltech may file patent applications covering the Patent Rights and will provide to The University of Chicago Stanford all serial numbers and filing dates, together with copies of all the applications, including copies of all office actions, responses and all other communications from the U.S. Patent and Trademark Office. 2.2 Caltech will, after consulting with The University of ChicagoStanford, and if necessary after consulting with Licensee, make an election whether, when, and in which countries, it wishes to file foreign patent applications. Caltech will notify The University of Chicago Stanford in writing, of its election regarding foreign filing. If foreign patent applications are filed, Caltech will provide to The University of Chicago Stanford copies of foreign patent applications and patent office actions as The University of Chicago Stanford may request in the course of prosecution. 2.3 Caltech will record assignments of domestic Patent Rights in the United States Patent and Trademark Office and will provide The University of Chicago Stanford with a photocopy of each recorded assignment. The University of Chicago Stanford inventors will assign to The University of Chicago Stanford and Caltech inventors will assign to Caltech. 2.4 Notwithstanding any other provision of this Agreement, Caltech will not abandon the prosecution of any patent application (except for purposes of filing continuation applications) or the maintenance of any Patent Rights without prior written notice to The University of Chicago Stanford in which case The University of Chicago Stanford may assume responsibility of the same. 2.5 Caltech will promptly provide The University of Chicago Stanford with copies of all patents issued under Patent Rights. PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO AN APPLICATION FOR CONFIDENTIAL TREATMENT UNDER RULE 406 OF THE SECURITIES ACT; [***] DENOTES OMISSIONS. 2.6 Caltech will invoice The University of Chicago Stanford for reimbursement of one-third of the unreimbursed costs of filing and prosecuting Patent Rights during the term of this Agreement, or, in the event a Licensee is to pay for Patent Prosecution, Caltech will invoice the Licensee for all the costs of filing and prosecution Patent Rights. Invoices of costs will be due 60 days from receipt.