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

Prosecution and Maintenance of Patent Rights. 4.1. GENERAL shall be responsible for the preparation, filing, prosecution and maintenance of all patent applications and patents included in PATENT RIGHTS. GENERAL shall use reasonable efforts to obtain the issuance of the broadest valid claims in such applications in such countries as METASYN may, from time to time specify. METASYN shall reimburse GENERAL for all reasonable costs incurred by GENERAL both prior to and subsequent to the LICENSE EFFECTIVE DATE for the preparation, filing, prosecution and maintenance of all PATENT RIGHTS ("COSTS") except as hereinafter provided, provided that patent counsel selected by GENERAL is acceptable to METASYN. With respect to COSTS incurred by GENERAL prior to the LICENSE EFFECTIVE DATE, GENERAL shall provide METASYN with a detailed accounting of such COSTS within thirty (30) days of the LICENSE EFFECTIVE DATE and METASYN shall reimburse GENERAL for such costs in twenty four (24) equal monthly installments commencing on the first day of the month following the month in which METASYN receives such accounting. With respect to COSTS incurred subsequent to the LICENSE EFFECTIVE DATE, GENERAL shall be reimbursed by METASYN within thirty (30) days of receipt of GENERAL's notice of payment of such COSTS and any COSTS not reimbursed within said thirty (30) days shall be charged interest at the rate of 1.5 percent per month compounded each thirty (30) days they remain unpaid. Subsequent to the LICENSE EFFECTIVE DATE, GENERAL (and by instruction, its patent counsel) shall consult with METASYN and its patent counsel as to the preparation, filing, prosecution and maintenance of such PATENT RIGHTS and shall furnish to METASYN copies of documents relevant to such preparation, filing, prosecution or maintenance sufficiently prior to filing such documents or making any payment due thereunder to allow for review and comment by METASYN. If, as a result of any such review, METASYN shall elect not to pay the expenses of any patent application or patent included in PATENT RIGHTS, METASYN shall so notify GENERAL within thirty (30) days of the receipt of such documents and shall thereby surrender its rights under such patent application or patent, provided, however, that METASYN shall remain obligated to reimburse GENERAL for any costs incurred with respect to such patent application or patent prior to said election.

Prosecution and Maintenance of Patent Rights. 4.1. GENERAL shall be responsible for The University shall, using agents or attorneys agreed to by the preparationparties (including agreement with respect to costs associated with drafting and prosecuting patent applications), filingfile, prosecution prosecute and maintenance of maintain the Licensed Patents and all patent applications and patents included disclosing and claiming inventions made in PATENT RIGHTS. GENERAL shall use reasonable efforts to obtain whole or in part by the issuance University employees, agents or contractors resulting from the research and development the University engages in on behalf of the broadest valid claims Company under the Agreement. The University shall file, prosecute and maintain one or more patent applications and patents in such applications in such those countries as METASYN may, designated by the Company. The University shall provide copies of all documents filed with or received from any domestic or foreign patent office to the Company to allow the Company adequate time to time specifyreview and comment. METASYN For any patent prosecution or maintenance in any country designated by the Company, the Company shall reimburse GENERAL the University within 45 days or receipt of written invoices provided to the Company by the University for all reasonable costs incurred by GENERAL both prior to expenses, including attorney’s fees and subsequent to the LICENSE EFFECTIVE DATE for the preparation, filinggovernment fees associated with such filings, prosecution and maintenance costs, and for patent searches performed as part of all PATENT RIGHTS ("COSTS") except as hereinafter provided, provided that an analysis of whether to file a patent counsel selected application claiming such an invention. Reimbursement by GENERAL is acceptable the Company for legal services would be limited to METASYNan amount no greater than the median amount set forth in the then current AIPLA Report of the Economic Survey for comparable legal services unless otherwise agreed to in writing in advance. With respect to COSTS incurred by GENERAL prior The amounts of this reimbursement would not be subjected to the LICENSE EFFECTIVE DATE, GENERAL shall provide METASYN with a detailed accounting limits or deducted from any other payments due from the Company to the University under the Agreement. The Company would reserve the right to discontinue reimbursement of such COSTS within thirty (30) days of the LICENSE EFFECTIVE DATE and METASYN shall reimburse GENERAL for such costs in twenty four (24) equal monthly installments commencing on the first day of the month following the month in which METASYN receives such accounting. With respect to COSTS incurred subsequent to the LICENSE EFFECTIVE DATE, GENERAL shall be reimbursed by METASYN within thirty (30) days of receipt of GENERAL's notice of payment of such COSTS and any COSTS not reimbursed within said thirty (30) days shall be charged interest at the rate of 1.5 percent per month compounded each thirty (30) days they remain unpaid. Subsequent to the LICENSE EFFECTIVE DATE, GENERAL (and by instruction, its patent counsel) shall consult with METASYN and its patent counsel as to the preparation, filingdrafting, prosecution and and/or maintenance of such PATENT RIGHTS and shall furnish to METASYN copies of documents relevant to such preparation, filing, prosecution in any country or maintenance sufficiently prior to filing such documents or making any payment due thereunder to allow for review and comment by METASYN. If, as a result of any such review, METASYN shall elect not to pay the expenses of any patent application or patent included by giving the University thirty days written notice. The Company would be responsible only for costs or fees incurred prior to such notice to the University, and the University would have the right, but not the obligation, to continue such drafting, prosecution, or maintenance at the University’s own expense. In the event that the Company chooses to discontinue reimbursement of patent drafting, prosecution, and/or maintenance in PATENT RIGHTS, METASYN shall so notify GENERAL within thirty (30) days of the receipt of such documents and shall thereby surrender its rights under such patent application or any country for any patent, provided, however, then the associated Patent Rights in that METASYN country shall remain obligated revert back to reimburse GENERAL the University. A decision by the Company to discontinue reimbursement for any patent costs incurred in a particular country shall not affect the Company’s reporting and payment obligations with respect to such patent application or patent prior to said electionsales of Licensed Products by the Company, its Affiliates, and its sublicensees in the particular country.

Prosecution and Maintenance of Patent Rights. 4.1. GENERAL shall be responsible Within * after the Effective Date, OPKO will transfer to TESARO responsibility for the preparation, filing, prosecuting and maintaining all OPKO Patent Rights (other than the OPKO Patent Rights, if any, that were licensed but not assigned to OPKO under the Asset Purchase Agreement) in such a way that there is not any loss of rights during such * period or in connection with the transition, including consulting with TESARO and cooperating with TESARO related to such activities prior to completion of the transition, and contacting the foreign agents of OPKO to assist in the transfer of power of attorney as required by the relevant patent offices for TESARO to assume prosecution of such files. Commencing after notification to the USPTO and maintenance OPKO foreign agent of the change in prosecution status, TESARO will have responsibility, at TESARO’s cost, for filing, conducting prosecution, and maintaining (including the defense of any interference or opposition proceedings) all such OPKO Patent Rights as to which OPKO has assumed and maintains responsibility under this Section, and shall use Commercially Reasonable Efforts in the conduct of such activities. TESARO will provide to OPKO copies of all prosecution filings and material submissions and correspondence related to OPKO Patent Rights for which TESARO has assumed and maintains responsibility under this Section sent to or received from patent applications offices, and patents included in PATENT RIGHTS. GENERAL shall other service providers including maintenance fee providers, and, with respect to patent applications, and material submissions, will use reasonable efforts to obtain the issuance provide OPKO with a draft of each such filing or material submission reasonably in advance of submission, and will consider in good faith any comments that OPKO may timely provide. In addition, TESARO will provide to OPKO such other information related to prosecution of the broadest valid claims in such applications in such countries OPKO Patent Rights for which TESARO has assumed and maintains responsibility under this Section as METASYN may, OPKO may from time to time specify. METASYN shall reimburse GENERAL for all reasonable costs incurred by GENERAL both prior reasonably request to and subsequent allow OPKO to the LICENSE EFFECTIVE DATE for the preparation, filing, prosecution and maintenance of all PATENT RIGHTS ("COSTS") except as hereinafter provided, provided that patent counsel selected by GENERAL is acceptable to METASYN. With respect to COSTS incurred by GENERAL prior to the LICENSE EFFECTIVE DATE, GENERAL shall provide METASYN with a detailed accounting of such COSTS within thirty (30) days of the LICENSE EFFECTIVE DATE and METASYN shall reimburse GENERAL for such costs in twenty four (24) equal monthly installments commencing on the first day of the month following the month in which METASYN receives such accounting. With respect to COSTS incurred subsequent to the LICENSE EFFECTIVE DATE, GENERAL shall be reimbursed by METASYN within thirty (30) days of receipt of GENERAL's notice of payment of such COSTS and any COSTS not reimbursed within said thirty (30) days shall be charged interest at the rate of 1.5 percent per month compounded each thirty (30) days they remain unpaid. Subsequent to the LICENSE EFFECTIVE DATE, GENERAL (and by instruction, its patent counsel) shall consult with METASYN and its patent counsel as to the preparation, filing, track prosecution and maintenance of such PATENT RIGHTS OPKO Patent Rights including docket reports of all pending and shall furnish issued patents and patent applications within OPKO Patent Rights. In the event TESARO decides to METASYN copies abandon prosecution in any country with respect to an OPKO Patent Right for which TESARO is responsible under this Section in a particular country or decides to not otherwise maintain or extend any OPKO Patent Right for which TESARO is responsible under this Agreement in a particular country, in either case where a substitute is not filed for such OPKO Patent Right (such OPKO Patent Right in the applicable country being referred to in this Agreement as an “Abandoned Patent Right”), TESARO will give OPKO written notice, and will transfer the relevant files and authority to OPKO, sufficiently in advance of documents relevant to such preparation, filing, prosecution or maintenance sufficiently prior to filing such documents or making any payment due thereunder loss of rights to allow for review and comment by METASYN. IfOPKO to file, prosecute, maintain or extend, as a result of any such reviewthe case may be, METASYN shall elect not to pay the expenses of any patent application or patent included in PATENT RIGHTS, METASYN shall so notify GENERAL within thirty (30) days of the receipt of such documents and shall thereby surrender its rights under such patent application or patent, provided, however, that METASYN shall remain obligated to reimburse GENERAL for any costs incurred claims with respect to such patent application or patent prior Abandoned Patent Rights in the relevant country, and such Abandoned Patent Right in the relevant country will no longer be included as an OPKO Patent Right licensed to said electionTESARO under Agreement.

Prosecution and Maintenance of Patent Rights. 4.1. GENERAL shall be responsible Within **** after the Effective Date, OPKO will transfer to TESARO responsibility for the preparation, filing, prosecuting and maintaining all OPKO Patent Rights (other than the OPKO Patent Rights, if any, that were licensed but not assigned to OPKO under the Asset Purchase Agreement) in such a way that there is not any loss of rights during such **** day period or in connection with the transition, including consulting with TESARO and cooperating with TESARO related to such activities prior to completion of the transition, and contacting the foreign agents of OPKO to assist in the transfer of power of attorney as required by the relevant patent offices for TESARO to assume prosecution of such files. Commencing after notification to the USPTO and maintenance OPKO foreign agent of the change in prosecution status, TESARO will have responsibility, at TESARO’s cost, for filing, conducting prosecution, and maintaining (including the defense of any interference or opposition proceedings) all such OPKO Patent Rights as to which OPKO has assumed and maintains responsibility under this Section, and shall use Commercially Reasonable Efforts in the conduct of such activities. TESARO will provide to OPKO copies of all prosecution filings and material submissions and correspondence related to OPKO Patent Rights for which TESARO has assumed and maintains responsibility under this Section sent to or received from patent applications offices, and patents included in PATENT RIGHTS. GENERAL shall other service providers including maintenance fee providers, and, with respect to patent applications, and material submissions, will use reasonable efforts to obtain the issuance provide OPKO with a draft of each such filing or material submission reasonably in advance of submission, and will consider in good faith any comments that OPKO may timely provide. In addition, TESARO will provide to OPKO such other information related to prosecution of the broadest valid claims in such applications in such countries OPKO Patent Rights for which TESARO has assumed and maintains responsibility under this Section as METASYN may, OPKO may from time to time specify. METASYN shall reimburse GENERAL for all reasonable costs incurred by GENERAL both prior reasonably request to and subsequent allow OPKO to the LICENSE EFFECTIVE DATE for the preparation, filing, prosecution and maintenance of all PATENT RIGHTS ("COSTS") except as hereinafter provided, provided that patent counsel selected by GENERAL is acceptable to METASYN. With respect to COSTS incurred by GENERAL prior to the LICENSE EFFECTIVE DATE, GENERAL shall provide METASYN with a detailed accounting of such COSTS within thirty (30) days of the LICENSE EFFECTIVE DATE and METASYN shall reimburse GENERAL for such costs in twenty four (24) equal monthly installments commencing on the first day of the month following the month in which METASYN receives such accounting. With respect to COSTS incurred subsequent to the LICENSE EFFECTIVE DATE, GENERAL shall be reimbursed by METASYN within thirty (30) days of receipt of GENERAL's notice of payment of such COSTS and any COSTS not reimbursed within said thirty (30) days shall be charged interest at the rate of 1.5 percent per month compounded each thirty (30) days they remain unpaid. Subsequent to the LICENSE EFFECTIVE DATE, GENERAL (and by instruction, its patent counsel) shall consult with METASYN and its patent counsel as to the preparation, filing, track prosecution and maintenance of such PATENT RIGHTS OPKO Patent Rights including docket reports of all pending and shall furnish issued patents and patent applications within OPKO Patent Rights. In the event TESARO decides to METASYN copies abandon prosecution in any country with respect to an OPKO Patent Right for which TESARO is responsible under this Section in a particular country or decides to not otherwise maintain or extend any OPKO Patent Right for which TESARO is responsible under this Agreement in a particular country, in either case where a substitute is not filed for such OPKO Patent Right (such OPKO Patent Right in the applicable country being referred to in this Agreement as an “Abandoned Patent Right”), TESARO will give OPKO written notice, and will transfer the relevant files and authority to OPKO, sufficiently in advance of documents relevant to such preparation, filing, prosecution or maintenance sufficiently prior to filing such documents or making any payment due thereunder loss of rights to allow for review and comment by METASYN. IfOPKO to file, prosecute, maintain or extend, as a result of any such reviewthe case may be, METASYN shall elect not to pay the expenses of any patent application or patent included in PATENT RIGHTS, METASYN shall so notify GENERAL within thirty (30) days of the receipt of such documents and shall thereby surrender its rights under such patent application or patent, provided, however, that METASYN shall remain obligated to reimburse GENERAL for any costs incurred claims with respect to such patent application or patent prior Abandoned Patent Rights in the relevant country, and such Abandoned Patent Right in the relevant country will no longer be included as an OPKO Patent Right licensed to said electionTESARO under Agreement.