Common use of Prosecution and Maintenance of Licensed Patent Rights Clause in Contracts

Prosecution and Maintenance of Licensed Patent Rights. (a) From and after the Effective Date, Licensee shall assume responsibility – including, but not limited to, fiscal responsibility – for the Prosecution and Maintenance of all Licensed Patent Rights worldwide and, unless otherwise provided in this Agreement, shall have the sole right, at its discretion, to Prosecute and Maintain all Licensed Patent Rights worldwide. Licensor shall use its commercially reasonable efforts to transition the Prosecution and Maintenance of all Licensed Patent Rights to Licensee promptly after the Effective Date and to reasonably assist Licensee in such transition and assumption. Licensee shall pay for all reasonable and documented out-of-pocket costs associated with such transition, including any costs to Licensor’s extant patent attorneys and staff but excluding any amounts for reimbursement of past expenses. Unless otherwise provided in this Agreement, Licensee shall have the sole right, but not the obligation, to Prosecute and Maintain any patent contained in the Licensed Patent Rights in a country. If Licensee elects to cease the Prosecution or Maintenance of a Licensed Patent Right, including a Joint Patent Right, Licensee shall provide Licensor with written notice immediately upon the decision to discontinue the Prosecution or Maintenance of such Patent Right, as the case may be, in any event, however, not later than ninety (90) calendar days before any relevant deadline relating to or any public disclosure of the relevant Patent Rights. In such event, Licensee shall permit Licensor, at Licensor’s sole discretion but after discussion with Licensee and in good faith consideration of the reasons of Licensee for ceasing the Prosecution or Maintenance of such Licensed Patent Right, to take over or continue, as the case may be, the Prosecution and Maintenance of such Patent Right at Licensor’s own expense. Licensee shall execute such documents and perform such acts, at the Licensor’s expense, as may be reasonably necessary to permit Licensor to take over and continue the Prosecution and Maintenance of such Patent Right on behalf and in the name of Licensee. Any such Patent Rights shall remain Licensed Patent Rights. (b) The Party controlling the Prosecution and Maintenance of the applicable Licensed Patent Rights or Joint Patent Rights in accordance with Section 5.2(a) is referred to as the “Prosecuting Party”. With respect to the Prosecution and Maintenance of Licensed Patent Rights, the Prosecuting Party shall: (i) choose patent counsel reasonably acceptable to the other Party; (ii) instruct such patent counsel to furnish the other Party with copies of all correspondence relating to the Licensed Patent Rights received from the United States Patent and Trademark Office and any other patent office promptly after receipt; (iii) instruct such patent counsel to furnish the other Party with copies of all correspondence relating to the Licensed Patent Rights sent to the United States Patent and Trademark Office and any other patent office promptly after it is sent; and (iv) to the extent practicable, instruct such patent counsel to furnish the other Party with copies of all proposed filings or other correspondence to the United States Patent and Trademark Office and any other patent office sufficiently in advance of such filing to permit the other Party a reasonable opportunity to review and comment on such response. The Prosecuting Party shall consider in good faith the comments and requests of the other Party with respect to the Prosecution and Maintenance of the applicable Licensed Patent Rights and shall communicate such comments and requests to its patent counsel. (c) All non-public information exchanged between the Parties regarding Prosecution, Maintenance and enforcement of the Licensed Patent Rights, and all shared information regarding analyses or opinions of third party intellectual property, shall be deemed Confidential Information of the disclosing Party (except in the case of Licensed Patent Rights that are Joint Patent Rights, in which case such non-public information shall be deemed the Confidential Information of both Parties). In addition, the Parties acknowledge and agree that, with regard to Prosecution, Maintenance and enforcement of the Licensed Patent Rights, the interests of the Parties as licensor and licensee are to obtain the strongest patent protection possible, and as such, are aligned and are legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Licensed Patent Rights or the Confidential Information, including privilege under the common interest doctrine and similar or related doctrines. (d) Each Party shall cooperate with the Prosecuting Party and its patent counsel in Prosecution and Maintenance of the Licensed Patent Rights in all countries, including, as applicable, (i) providing the Prosecuting Party and its patent counsel with data and other information as appropriate with respect thereto, (ii) providing any necessary powers of attorney (including limited powers of attorney) and (iii) executing any other required documents or instruments for such Prosecution and Maintenance. (e) Licensee shall be responsible for all fees and costs charged by patent counsel with respect to the Prosecution and Maintenance of the Licensed Patent Rights at Licensee’s request and all other out-of-pocket costs and expenses incurred by Licensee as Prosecuting Party in connection with such Prosecution and Maintenance of the Licensed Patent Rights during the Term. For clarity, such expenses shall not include any expenses of Licensor incurred by Licensor in connection with (i) its rights to review and comment on patent prosecution, (ii) its rights to undertake enforcement actions, or (iii) any actions undertaken by Licensor other than at Licensee’s request.

Prosecution and Maintenance of Licensed Patent Rights. (a) From and after the Effective Date, Licensee shall assume responsibility – including, but not limited to, fiscal responsibility – for the Prosecution and Maintenance of all Licensed Patent Rights worldwide and, unless otherwise provided in this Agreement, Licensor shall have the sole right, at its sole expense and discretion, to Prosecute and Maintain Licensed Patent Rights in countries other than Listed Countries and shall provide Licensee with prompt written notice of the countries in which it exercises such right. (b) Subject to Section 5.2(a), Licensee shall have the right, at is sole expense and discretion, to Prosecute and Maintain all Patent Rights owned or controlled by Licensee. In addition, Licensee shall have the first right, at its sole expense and discretion, to Prosecute and Maintain all Licensed Patent Rights worldwidein the Listed Countries. Licensor shall use its commercially reasonable efforts In the event Licensee fails or chooses not to transition the Prosecution and Maintenance of all Prosecute or Maintain any Licensed Patent Rights to Licensee promptly after the Effective Date and to reasonably assist Licensee in such transition and assumption. Licensee shall pay for all reasonable and documented out-of-pocket costs associated with such transitiona Listed Country, including any costs to Licensor’s extant patent attorneys and staff but excluding any amounts for reimbursement of past expenses. Unless otherwise provided in this Agreement, Licensee Licensor shall have the sole right, but not the obligation, at its sole expense and discretion, to Prosecute and Maintain any patent contained in the such Licensed Patent Rights in a countrysuch Listed Country. If Licensee elects Prior to cease the Prosecution or Maintenance of a Licensed Patent Rightexercising such right, including a Joint Patent Right, Licensee Licensor shall provide Licensor with written notice immediately upon the decision to discontinue the Prosecution or Maintenance of such Patent Right, as the case may be, in any event, however, not later than ninety (90) calendar days before any relevant deadline relating to or any public disclosure of the relevant Patent Rights. In such event, Licensee shall permit Licensor, at Licensor’s sole discretion but after discussion consult with Licensee and in give good faith consideration of the to Licensee’s reasons of Licensee for ceasing the Prosecution or Maintenance of not Prosecuting and Maintaining such Licensed Patent Right, to take over or continue, as the case may be, the Prosecution and Maintenance of Rights in such Patent Right at Licensor’s own expense. Licensee shall execute such documents and perform such acts, at the Licensor’s expense, as may be reasonably necessary to permit Licensor to take over and continue the Prosecution and Maintenance of such Patent Right on behalf and in the name of Licensee. Any such Patent Rights shall remain Licensed Patent RightsListed Country. (bc) The Party controlling the Prosecution and Maintenance of the applicable Licensed Patent Rights or Joint Patent Rights in accordance with Section 5.2(a) is referred to as the “Prosecuting Party”. With respect to the Prosecution and Maintenance of Licensed Patent Rights, the Prosecuting Party Licensee shall: (i) choose patent counsel reasonably acceptable to the other PartyLicensor; and (ii) instruct such patent counsel to furnish the other Party Licensor with copies of all correspondence relating to the Licensed Patent Rights received from the United States Patent and Trademark Office and any other patent office promptly after receipt; receipt (but in any event, no later than [**] after it is received), (iii) instruct such patent counsel to furnish the other Party Licensor with copies of all correspondence relating to the Licensed Patent Rights sent to the United States Patent and Trademark Office and any other patent office promptly after it is sent (but in any event, no later than [**] after it is sent; ), and (iv) to the extent practicable, instruct such patent counsel to furnish the other Party Licensor with copies of all proposed filings or other correspondence to the United States Patent and Trademark Office and any other patent office sufficiently in advance of such filing to permit the other Party Licensor a reasonable opportunity to review and comment on such response. The Prosecuting Party shall consider in good faith Licensee [**] the comments and requests of the other Party Licensor with respect to the Prosecution and Maintenance of the applicable Licensed Patent Rights. During the Term, Licensee shall notify Licensor at least [**] in advance of the next deadline if (A) Licensee decides that it does not wish to continue paying for the Prosecution and Maintenance of a particular patent or patent application within the Licensed Patent Rights in the Listed Countries for which no substitute has been filed, or (B) Licensee decides that it intends to expressly abandon claim scope in a particular patent or patent application within the Licensed Patent Rights. In such cases (A) or (B), Licensor shall have the right to assume sole responsibility for Prosecution and shall communicate such comments and requests to its Maintenance of the respective patent counsel. (c) All non-public information exchanged between the Parties regarding Prosecution, Maintenance and enforcement of or patent application within the Licensed Patent Rights, after consultation with Licensee and all shared information regarding analyses good faith consideration to Licensee’s reasons for not Prosecuting or opinions of third party intellectual propertyMaintaining the applicable respective patent or patent application (and, shall if the Licensor assumes such responsibility, with respect to clause (B), such sole responsibility will be deemed Confidential Information of assumed for the disclosing Party (except in the case of Licensed Patent Rights that are Joint Patent Rightsclaim scope by filing a continuing application restricted to such abandoned claim scope). If Licensor assumes such responsibility, in which case such non-public information then Licensor shall be deemed the Confidential Information new Prosecuting Party and: (1) Licensor may designate any counsel of both Parties). In additionits choice to handle the Prosecution and Maintenance of such patent or patent application or of the continuing application; (2) Licensor, shall solely bear the Parties acknowledge cost of such Prosecution and agree thatMaintenance; and (3) Licensee shall cooperate reasonably, at its sole cost and expense, with regard to Prosecution, Maintenance Licensor in such Prosecution and enforcement of the Licensed Patent Rights, the interests of the Parties as licensor and licensee are to obtain the strongest patent protection possible, and as such, are aligned and are legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Licensed Patent Rights or the Confidential Information, including privilege under the common interest doctrine and similar or related doctrinesMaintenance. (d) Each Party Both Parties shall cooperate with the Prosecuting Party each other and its patent counsel in Prosecution and Maintenance of the Licensed Patent Rights in all countries, including, as applicable, (i) providing the Prosecuting Party and its patent counsel with data and other information as appropriate with respect thereto, (ii) providing any necessary powers of attorney (including limited powers of attorney) [**] and (iii) executing any other required documents or instruments for such Prosecution and Maintenance. (e) Licensee The Party controlling the Prosecution and Maintenance of the applicable Licensed Patent Rights in accordance with Section 5.2(a), (b) or (c), as applicable, is referred to as the “Prosecuting Party”. The Prosecuting Party shall be responsible for all fees and costs charged by patent counsel with respect to the Prosecution and Maintenance of the applicable Licensed Patent Rights at Licensee’s request and all other out-of-pocket costs and expenses incurred by Licensee as the Prosecuting Party in connection with such Prosecution and Maintenance of the applicable Licensed Patent Rights during the Term. For clarity, such expenses shall not include any expenses of Licensor the other Party incurred by Licensor such other Party in connection with (i) its rights to review and comment on patent prosecution, (ii) its rights to undertake enforcement actions, or (iii) any actions undertaken by Licensor such other Party other than at Licenseethe Prosecuting Party’s request.

Prosecution and Maintenance of Licensed Patent Rights. IDEA agrees to prosecute or cause to prosecute to grant or final rejection in the Territory the patent applications (aincluding any reissue patent applications or reexamination patent applications) From included in the Licensed Patent Rights that are solely owned or Controlled by any member of the IDEA Group (hereinafter collectively ''Patent Applications"). IDEA shall so prosecute each such Patent Application at IDEA's sole expense. IDEA shall pay all attorneys fees and after other costs associated with the Effective Datepreparation, Licensee filing, and prosecution of such Patent Applications in the Territory included in the Licensed Patent Rights; provided that ALPHARMA shall assume responsibility – reimburse IDEA for the sum of (i) all of the annual Patent Costs relating to such Patent Applications up to [**] dollars U.S. dollars ($[**]) per annum plus (ii) [**] percent ([**]%) of such Patent Costs in excess of [**] dollars U.S. dollars ($[**]) per annum less (iii) any amount which any other Person pays any member of the IDEA Group in respect of such Patent Costs (and IDEA shall deduct such amounts from any sums it requests from ALPHARMA by way of reimbursement). IDEA shall promptly inform ALPHARMA of any third party obligation to pay any such Patent Costs which applies from time to time. ALPHARMA shall reimburse IDEA within [**] days of IDEA requesting reimbursement (and providing reasonable evidence of such Patent Costs payments as it has made to ALPHARMA). IDEA shall be responsible for all of its own internal costs relating to such Patent Applications. Each quarter, IDEA shall report to ALPHARMA on the status of the Patent Applications and the Licensed Patent Rights. IDEA shall promptly provide to ALPHARMA copies of all new information, materials and correspondence relating to the Patent Applications, including, but not limited towithout limitation, fiscal responsibility – for papers filed with and received from patent offices in the Prosecution Territory, and Maintenance correspondence with foreign agents in the Territory. IDEA or IDEA's patent counsel shall provide ALPHARMA reasonable opportunities to substantively comment on the prosecution and management of the Patent Applications. IDEA or its patent counsel will seek ALPHARMA's comments and suggestions prior to taking material actions (including the filing of initial applications), and will take any actions reasonably recommended by ALPHARMA. ALPHARMA shall have the right to review and make comments on and recommendations in relation to the prosecution and maintenance and management of the Patent Applications provided it does so promptly, consistent with any filing deadlines, including without limitation as to all associated prosecution, patent application filings, interference, opposition, re-examination, re-issue, revocation and invalidity proceedings (in all cases at its own expense). Without limitation to the foregoing, IDEA shall promptly disclose to ALPHARMA copies of all Licensed Patent Rights worldwide and, unless otherwise provided in this Agreement, shall have the sole right, at its discretion, to Prosecute and Maintain all Licensed Patent Rights worldwide. Licensor shall use its commercially reasonable efforts to transition the Prosecution and Maintenance of all Licensed Patent Rights to Licensee promptly filed after the Effective Date and to reasonably assist Licensee in (each of which shall constitute Confidential Information of IDEA until such transition and assumption. Licensee shall pay for all reasonable and documented out-of-pocket costs associated with such transition, including any costs to Licensor’s extant patent attorneys and staff but excluding any amounts for reimbursement of past expenses. Unless otherwise provided in this Agreement, Licensee shall have the sole right, but not the obligation, to Prosecute and Maintain any patent contained in the Licensed Patent Rights in a country. If Licensee elects to cease the Prosecution or Maintenance of a Licensed Patent Right, including a Joint Patent Right, Licensee shall provide Licensor with written notice immediately upon the decision to discontinue the Prosecution or Maintenance of such Patent Right, time as the case may be, in any event, however, not later than ninety (90) calendar days before any relevant deadline relating to or any public disclosure of the relevant Patent Rights. In such event, Licensee shall permit Licensor, at Licensor’s sole discretion but after discussion with Licensee Application is published) and in good faith consideration of the reasons of Licensee for ceasing the Prosecution or Maintenance of such Licensed Patent Right, to take over or continue, as the case may be, the Prosecution and Maintenance of such Patent Right at Licensor’s own expense. Licensee shall execute such documents and perform such acts, at the Licensor’s expense, as may be reasonably necessary to permit Licensor to take over and continue the Prosecution and Maintenance of such Patent Right on behalf and in the name of Licensee. Any such Patent Rights shall remain Licensed Patent Rights. (b) The Party controlling the Prosecution and Maintenance of the applicable Licensed Patent Rights or Joint Patent Rights in accordance with Section 5.2(a) is referred to as the “Prosecuting Party”. With respect to the Prosecution and Maintenance of Licensed Patent Rights, the Prosecuting Party shall: (i) choose patent counsel reasonably acceptable to the other Party; (ii) instruct such patent counsel to furnish the other Party with copies details of all correspondence relating such proceedings and materials. IDEA shall also promptly inform ALPHARMA if it becomes aware of any opposition to or attack on the Licensed Patent Rights received from the United States Patent and Trademark Office and validity or ownership of any other patent office promptly after receipt; (iii) instruct such patent counsel to furnish the other Party with copies of all correspondence relating to the Licensed Patent Rights sent to the United States Patent and Trademark Office and any other patent office promptly after it is sent; and (iv) to the extent practicable, instruct such patent counsel to furnish the other Party with copies of all proposed filings or other correspondence to the United States Patent and Trademark Office and any other patent office sufficiently in advance of such filing to permit the other Party a reasonable opportunity to review and comment on such response. The Prosecuting Party shall consider in good faith the comments and requests of the other Party with respect to the Prosecution and Maintenance of the applicable Licensed Patent Rights and shall communicate such comments and requests to its patent counsel. (c) All non-public information exchanged between the Parties regarding Prosecution, Maintenance and enforcement of the Licensed Patent Rights, and all shared information regarding analyses or opinions of third party intellectual property, shall be deemed Confidential Information of the disclosing Party (except in the case of Licensed Patent Rights that are Joint Patent Rights, in which case such non-public information shall be deemed the Confidential Information of both Parties). In addition, the Parties acknowledge and agree that, with regard to Prosecution, Maintenance and enforcement of the Licensed Patent Rights, the interests of the Parties as licensor and licensee are to obtain the strongest patent protection possible, and as such, are aligned and are legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Licensed Patent Rights or the Confidential Information, including privilege under the common interest doctrine and similar or related doctrines. (d) Each Party shall cooperate with the Prosecuting Party and its patent counsel in Prosecution and Maintenance of the Licensed Patent Rights and the Parties shall discuss the matter in all countriesgood faith with a view to agreeing upon a joint plan of action, including, as applicable, (i) providing failing which the Prosecuting Party and its patent counsel with data and other information as appropriate with respect thereto, (ii) providing any necessary powers of attorney (including limited powers of attorney) and (iii) executing any other required documents or instruments for final decision in relation to such Prosecution and Maintenance. (e) Licensee matter shall be responsible for all fees and costs charged by patent counsel with respect to the Prosecution and Maintenance of the Licensed Patent Rights at Licensee’s request and all other out-of-pocket costs and expenses incurred by Licensee as Prosecuting Party in connection with such Prosecution and Maintenance of the Licensed Patent Rights during the Term. For clarity, such expenses IDEA's provided that IDEA shall not include any expenses of Licensor incurred by Licensor in connection with (i) its rights to review and comment on patent prosecutionunreasonably refuse to, (ii) its rights to undertake enforcement actionsgive, or (iii) delay in giving, effect to any actions undertaken reasonable requests made in relation thereto by Licensor other than at Licensee’s requestALPHARMA.