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

Prosecution and Maintenance of Patent Rights. The University shall, using agents or attorneys agreed to by the parties (including agreement with respect to costs associated with drafting and prosecuting patent applications), file, prosecute and maintain the Licensed Patents and all patent applications and patents disclosing and claiming inventions made in whole or in part by the University employees, agents or contractors resulting from the research and development the University engages in on behalf of the Company under the Agreement. The University shall file, prosecute and maintain one or more patent applications and patents in those countries 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 review and comment. For any patent prosecution or maintenance in any country designated by the Company, the Company shall reimburse the University within 45 days or receipt of written invoices provided to the Company by the University for all expenses, including attorney’s fees and government fees associated with such filings, prosecution and maintenance costs, and for patent searches performed as part of an analysis of whether to file a patent application claiming such an invention. Reimbursement by the Company for legal services would be limited to an 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. The amounts of this reimbursement would not be subjected to the 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 patent drafting, prosecution and/or maintenance in any country or for any patent application or patent 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 any country for any patent, then the associated Patent Rights in that country shall revert back to the University. A decision by the Company to discontinue reimbursement for patent costs in a particular country shall not affect the Company’s reporting and payment obligations with respect to sales of Licensed Products by the Company, its Affiliates, and its sublicensees in the particular country.

Prosecution and Maintenance of Patent Rights. The University shall(a) For the Term, using agents or attorneys agreed to by the parties (including agreement with respect to costs associated with drafting Acer will be responsible for filing, prosecuting and prosecuting patent applications), file, prosecute and maintain the Licensed Patents and maintaining all patent applications and patents disclosing and claiming inventions made included in whole the Patent Rights, whether in the Acer Territory or the Relief Territory, using independent patent counsel reasonably acceptable to Relief in part by the University employees, agents or contractors resulting from the research and development the University engages in on behalf of the Company under the AgreementRelief Territory. The University shall file, prosecute and maintain one or more Acer will at Relief’s expense (subject to Section 9.3(b)): (i) instruct such patent applications and patents in those countries designated by the Company. The University shall provide counsel to furnish Relief with copies of all documents filed with or received from any domestic or foreign patent office material correspondence relating to the Company Patent Rights from the United States Patent and Trademark Office (USPTO) and any other patent office, as well as copies of all proposed responses to allow the Company adequate such material correspondence in time for Relief to review and commentcomment on such response; (ii) give Relief an opportunity to review the text of each patent application before filing; (iii) consult with Relief with respect thereto; (iv) supply Relief with a copy of the application as filed, together with notice of its filing date and serial number; and (v) keep Relief advised of the status of actual and prospective patent filings. For Acer will give Relief the opportunity to provide comments on and make requests of Acer concerning the preparation, filing, prosecution, protection and maintenance of the Patent Rights, and will consider such comments and requests in good faith. Subject to Section 9.3(b), Relief agrees to pay all documented, out-of-pocket legal costs, expenses and filing fees with respect to the foregoing activities in the Relief Territory. Acer will instruct patent counsel to invoice Relief directly for all such out-of-pocket legal costs, expenses and filing fees, and Relief agrees to pay all such undisputed invoices within thirty (30) days of receipt. (b) In the event that Relief decides not to pay for the costs associated with either (i) the prosecution of any patent prosecution or maintenance of the Patent Rights in any country designated by the Company, the Company shall reimburse the University within 45 days or receipt of written invoices provided to the Company by the University for all expenses, including attorney’s fees and government fees associated with such filings, prosecution and maintenance costs, and for patent searches performed as part of an analysis of whether to file a patent application claiming such an invention. Reimbursement by the Company for legal services would be limited to an amount no greater than the median amount set forth in the then current AIPLA Report Relief Territory to issuance or (ii) maintenance of any foreign issued patent on the Economic Survey for comparable legal services unless otherwise agreed to Patent Rights in the Relief Territory, Relief will timely notify Acer in writing thereof (such Patent Rights in advance. The amounts of this reimbursement would not such country will be subjected referred to the 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 patent drafting, prosecution and/or maintenance in any country or for any patent application or patent 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 expenseas “Abandoned Patent Rights”). In the event that the Company chooses to discontinue reimbursement of patent drafting, prosecution, and/or maintenance in Relief’s abandonment of any country for any patent, then the associated Patent Rights in that country shall revert back to any country, the University. A decision by Acer Technology License or the Company to discontinue reimbursement for patent costs in a particular country shall not affect the Company’s reporting and payment obligations Acer Sublicense, as applicable, will terminate with respect to sales of Licensed Products by the Company, its Affiliates, and its sublicensees in the particular countrysuch Abandoned Patent Rights.

Prosecution and Maintenance of Patent Rights. (a) At the initiative of ProPhase or Licensor, the Parties shall consult in good faith with each other regarding the filing, prosecution, and maintenance of all Licensed Patents. The University shallLicensed Patents shall be diligently filed, prosecuted and maintained by Licensor using agents reputable counsel. Licensor shall keep ProPhase reasonably informed with regard to the preparation, filing, prosecution, and maintenance of the Licensed Patents, including by providing ProPhase (or attorneys agreed its designee) copies of office actions issued from patent offices, proposed responses to such office actions, and any other patent related filings, to be made to such patent authority in the Territory sufficiently in advance of submitting such filings or responses so as to allow for a reasonable opportunity for ProPhase to review and comment thereon. Licensor shall consider in good faith any such comments for incorporation into such draft. Licensor represents that during the Term that (a) all Licensed Patents will be diligently prosecuted in the respective patent offices in the Territory in accordance with applicable laws, rules and regulations, (b) all Licensed Patents will be filed and maintained properly and correctly, (c) Licensor will pay all applicable fees on or before the due date for payment, and (d) all Licensed Patents will identify each and every inventor of the claims thereof as determined in accordance with the laws of the jurisdiction in which such Patent is filed. Prophase shall reimburse Global BioLife for reasonable attorney fees and patent office costs associated with the prosecution and maintenance of the Licensed Patents on a quarterly basis commencing on September 30, 2022. (b) If, at any time during the Term, the Parties may mutually agree that it is undesirable, as to one or more countries, to file, prosecute or maintain any Licensed Patent, then Global BioLife shall have discretion to refrain from filing, prosecuting and/or maintaining any Licensed Patent or permitting the Licensed Patent to lapse. (c) The Parties shall cooperate with each other and discuss, in good faith, the Patent Rights within the Licensed Patents Covering the Licensed Compound and Licensed Products to enable Prophase to make filings with Regulatory Authorities, as required or allowed in connection with (A) in the United States, the FDA’s Orange Book and (B) outside the United States, under the national implementations of Article 10.1(a)(iii) of Directive 2001/EC/83 or other international equivalents thereof. Global BioLife shall cooperate with Prophase’s reasonable requests in connection therewith, including meeting any submission deadlines, in each case, to the extent required or permitted by applicable law. (d) The Parties shall cooperate in obtaining Patent Term Extensions pursuant to 35 U.S.C. § 156 and foreign counterparts and equivalents thereof, including supplementary protection certificates, to the parties (including agreement extent such extensions are available with respect to costs associated with drafting and prosecuting patent applications), file, prosecute and maintain the Licensed Patents and all patent applications and patents disclosing and claiming inventions made in whole or in part by the University employees, agents or contractors resulting from the research and development the University engages in on behalf of the Company under the Agreement. The University shall file, prosecute and maintain one or more patent applications and patents in those countries 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 review and comment. For any patent prosecution or maintenance in any country designated by the Company, the Company shall reimburse the University within 45 days or receipt of written invoices provided to the Company by the University for all expenses, including attorney’s fees and government fees associated with such filings, prosecution and maintenance costs, and for patent searches performed as part of an analysis of whether to file a patent application claiming such an invention. Reimbursement by the Company for legal services would be limited to an 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. The amounts of this reimbursement would not be subjected to the 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 patent drafting, prosecution and/or maintenance in any country or for any patent application or patent 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 any country for any patent, then the associated applicable Patent Rights in that country shall revert back to the University. A decision by the Company to discontinue reimbursement for patent costs in a particular country shall not affect the Company’s reporting and payment obligations with respect to sales of Licensed Products by the Company, its Affiliates, and its sublicensees in the particular country(“Extension Activities”).

Prosecution and Maintenance of Patent Rights. The University shall(a) For the Term, using agents or attorneys agreed to by the parties (including agreement with respect to costs associated with drafting Xxxx will be responsible for filing, prosecuting and prosecuting patent applications), file, prosecute and maintain the Licensed Patents and maintaining all patent applications and patents disclosing and claiming inventions made included in whole the Patent Rights, whether in the Acer Territory or the Relief Territory, using independent patent counsel reasonably acceptable to Relief in part by the University employees, agents or contractors resulting from the research and development the University engages in on behalf of the Company under the AgreementRelief Territory. The University shall file, prosecute and maintain one or more patent applications and patents in those countries designated by the Company. The University shall provide Acer will: (i) furnish Relief with copies of all documents filed with or received from any domestic or foreign patent office material correspondence relating to the Company Patent Rights from the United States Patent and Trademark Office (USPTO) and any other patent office, as well as copies of all proposed responses to allow the Company adequate such material correspondence in time for Relief to review and commentcomment on such response; (ii) give Relief an opportunity to review the text of each patent application before filing; (iii) consult with Relief with respect thereto; (iv) supply Relief with a copy of the application as filed, together with notice of its filing date and serial number; and (v) keep Relief advised of the status of actual and prospective patent filings. For Acer will give Relief the opportunity to provide comments on and make requests of Acer concerning the preparation, filing, prosecution, protection and maintenance of the Patent Rights, and will consider such comments and requests in good faith. Acer shall not invoice any patent fee to Relief for the performance of the activities under this Section 9.4 (a). (b) In the event that Xxxx decides not to pay for the costs associated with either (i) the prosecution or maintenance of any of the Patent Rights in any country designated by the Company, the Company shall reimburse the University within 45 days or receipt of written invoices provided to the Company by the University for all expenses, including attorney’s fees and government fees associated with such filings, prosecution and maintenance costs, and for patent searches performed as part of an analysis of whether to file a patent application claiming such an invention. Reimbursement by the Company for legal services would be limited to an amount no greater than the median amount set forth in the then current AIPLA Report Relief Territory to issuance or (ii) maintenance of any foreign issued patent on the Economic Survey for comparable legal services unless otherwise agreed to Patent Rights in the Relief Territory, Acer will timely notify Relief in writing thereof (such Patent Rights in advance. The amounts of this reimbursement would not such country will be subjected referred to as “Abandoned Patent Rights”) with sufficient advance notice for Relief to assume the limits prosecution 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 patent drafting, prosecution and/or maintenance in any country or for any patent application or patent 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 expensemaintenance. In the event that the Company chooses to discontinue reimbursement of patent drafting, prosecution, and/or maintenance in Acer’s abandonment of any country for any patent, then the associated Patent Rights in that country shall revert back to any country, the University. A decision by Acer Technology License or the Company to discontinue reimbursement for patent costs in a particular country shall not affect the Company’s reporting and payment obligations Acer Sublicense, as applicable: a) will terminate with respect to sales such Abandoned Patent Rights; and b) shall not be affected with respect to the rest of Licensed Products by its content. In the Company, event Relief decides to prosecute or maintain any Abandoned Patent Rights: a) Acer shall assign to Relief or any of its Affiliates, Affiliates any and its sublicensees all rights to such patents and b) such Abandoned Patent Rights shall not be deemed to be included in the particular countryPatent Rights after such assignment and, as effect of that, in case such Abandoned Patent Right was the last Acer Patent securing Acer’s Royalty Payments, no more Royalty Payments shall be due for the relative country of Relief Territory.

Prosecution and Maintenance of Patent Rights. The University shall(a) For the Term, using agents or attorneys agreed to by the parties (including agreement with respect to costs associated with drafting Acer will be responsible for filing, prosecuting and prosecuting patent applications), file, prosecute and maintain the Licensed Patents and maintaining all patent applications and patents disclosing and claiming inventions made included in whole the Patent Rights, whether in the Acer Territory or the Relief Territory, using independent patent counsel reasonably acceptable to Relief in part by the University employees, agents or contractors resulting from the research and development the University engages in on behalf of the Company under the AgreementRelief Territory. The University shall file, prosecute and maintain one or more Acer will at Relief’s expense (subject to Section 9.3(b)): (i) instruct such patent applications and patents in those countries designated by the Company. The University shall provide counsel to furnish Relief with copies of all documents filed with or received from any domestic or foreign patent office material correspondence relating to the Company Patent Rights from the United States Patent and Trademark Office (USPTO) and any other patent office, as well as copies of all proposed responses to allow the Company adequate such material correspondence in time for Relief to review and commentcomment on such response; (ii) give Relief an opportunity to review the text of each patent application before filing; (iii) consult with Relief with respect thereto; (iv) supply Relief with a copy of the application as filed, together with notice of its filing date and serial number; and (v) keep Relief advised of the status of actual and prospective patent filings. For Acer will give Relief the opportunity to provide comments on and make requests of Acer concerning the preparation, filing, prosecution, protection and maintenance of the Patent Rights, and will consider such comments and requests in good faith. Subject to Section 9.3(b), Relief agrees to pay all documented, out-of-pocket legal costs, expenses and filing fees with respect to the foregoing activities in the Relief Territory. Acer will instruct patent counsel to invoice Relief directly for all such out-of-pocket legal costs, expenses and filing fees, and Relief agrees to pay all such undisputed invoices within thirty (30) days of receipt. (b) In the event that Relief decides not to pay for the costs associated with either (i) the prosecution of any patent prosecution or maintenance of the Patent Rights in any country designated by the Company, the Company shall reimburse the University within 45 days or receipt of written invoices provided to the Company by the University for all expenses, including attorney’s fees and government fees associated with such filings, prosecution and maintenance costs, and for patent searches performed as part of an analysis of whether to file a patent application claiming such an invention. Reimbursement by the Company for legal services would be limited to an amount no greater than the median amount set forth in the then current AIPLA Report Relief Territory to issuance or (ii) maintenance of any foreign issued patent on the Economic Survey for comparable legal services unless otherwise agreed to Patent Rights in the Relief Territory, Relief will timely notify Acer in writing thereof (such Patent Rights in advance. The amounts of this reimbursement would not such country will be subjected referred to the 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 patent drafting, prosecution and/or maintenance in any country or for any patent application or patent 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 expenseas “Abandoned Patent Rights”). In the event that the Company chooses to discontinue reimbursement of patent drafting, prosecution, and/or maintenance in Relief’s abandonment of any country for any patent, then the associated Patent Rights in that country shall revert back to any country, the University. A decision by Acer Technology License or the Company to discontinue reimbursement for patent costs in a particular country shall not affect the Company’s reporting and payment obligations with respect to sales of Licensed Products by the CompanyAcer Sublicense, its Affiliatesas applicable, and its sublicensees in the particular country.will terminate