Common use of Prosecution and Maintenance of Patents Clause in Contracts

Prosecution and Maintenance of Patents. (a) Subject to any Adolor third party agreements, Adolor shall prepare, file prosecute and maintain in the Territory and at its own costs, upon consultation with Santen, the Adolor Patents and any jointly owned patents. Adolor shall notify Santen of the status of all patent filings (including, without limitation, the grant of any Adolor Patents) and, upon the request of Santen, shall provide advance copies of any papers relating to the filing, prosecution, or maintenance of such Adolor Patents. For Adolor Patents and patent applications, and for jointly owned patents and patent applications, Santen shall reimburse Adolor for one-half of any and all costs for the filing, prosecution, or maintenance of such patents and patent applications incurred by Adolor. Adolor shall submit an invoice for reimbursement of such patent costs to Santen and Santen shall pay such invoice within thirty (30) days of submission by Adolor. Santen shall have the right to audit the patent costs subject to reimbursement once per year. Such audit rights shall expire twenty- four (24) months after an invoice is submitted by Adolor for payment. (b) Subject to Section 8.04 (b), all amounts for patent applications paid by Santen under Section 8.02 (a) for each country of the Territory shall be creditable on a country-by-country basis against future Royalties payable to Adolor by Santen for each such country; provided, however, that no more than **% of the Royalties payable for any period in such country shall be paid by crediting amounts paid by Santen under Section 8.02(a), and further **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. provided that Santen may carry forward all amounts paid under Section 8.02(a) for crediting against future Royalties in such country under this Section 8.02(b) until such amounts are exhausted.

Prosecution and Maintenance of Patents. 14.1.1 Tarsus shall have the first right (abut not the obligation) Subject to any Adolor third party agreements, Adolor Prosecute the Licensed Patents at its own expense. Tarsus shall prepare, file prosecute and maintain keep Lian reasonably updated with regard to the Prosecution of the Licensed Patents in the Territory and at its own costs, upon consultation shall provide Lian with Santen, the Adolor Patents and any jointly owned patents. Adolor shall notify Santen of the status copies of all patent filings applications, filings, and official correspondence (including, without limitationapplications, office actions and responses) relating thereto. Tarsus will provide Lian a reasonable opportunity to provide comments on drafts of all material filings and correspondence related to Prosecution of the Licensed Patents in the Territory (which comments Tarsus shall consider in good faith but may accept or reject in its sole discretion). Notwithstanding the foregoing, with respect to any Licensed Patent that is licensed to Tarsus from a Third Party, the grant foregoing review and comment rights will only apply to the extent that Tarsus has such rights. 14.1.2 Tarsus may abandon the Prosecution of any Adolor Patents) andLicensed Patents in its sole discretion. Tarsus will provide Lian at least [***] days’ notice of its intention to abandon such Prosecution and provide Lian with reasonable opportunity, upon but not the request of Santenobligation, shall provide advance copies of any papers relating to assume responsibility for the filing, prosecution, or maintenance Prosecution of such Adolor PatentsLicensed Patents as set forth below. For Adolor In the event that Tarsus abandons the Prosecution of Licensed Patents and patent applicationsin the Territory at any time during the Term, Lian may assume the Prosecution responsibility therefor in the name of Tarsus, and for jointly owned patents and patent applications, Santen shall reimburse Adolor for one-half of any and all the costs for the filing, prosecution, or maintenance of associated with such patents and patent applications incurred by Adolor. Adolor shall submit an invoice for reimbursement of such patent costs to Santen and Santen shall pay such invoice within thirty (30) days of submission by Adolor. Santen shall have the right to audit the patent costs subject to reimbursement once per year. Such audit rights shall expire twenty- four (24) months after an invoice is submitted by Adolor for payment. (b) Subject to Section 8.04 (b), all amounts for patent applications paid by Santen under Section 8.02 (a) for each country of the Territory shall be creditable on a country-by-country basis against future Royalties payable to Adolor by Santen for each such country; provided, however, that no more than **% of the Royalties payable for any period in such country prosecution shall be paid by crediting amounts paid Lian at its sole discretion. No such action by Santen under Section 8.02(a), and further **=Certain information on this page has been omitted and filed separately with Lian will change the Commission. Confidential treatment has been requested ownership or license provisions with respect to the omitted portionsapplicable Licensed Patent unless agreed by the Parties in writing. provided Tarsus will execute all documents that Santen Lian may carry forward reasonably request for such purposes. Lian shall have no further obligations to Tarsus with respect to any such Licensed Patents and such Licensed Patent shall be deemed expired for all amounts paid under purposes of Section 8.02(a) for crediting against future Royalties in 9.6.3. Notwithstanding the foregoing, with respect to any Licensed Patent that is licensed to Tarsus from a Third Party, the foregoing will only apply to the extent that Tarsus has such country under this Section 8.02(b) until such amounts are exhaustedrights.

Prosecution and Maintenance of Patents. (a) Subject to any Adolor third party agreements, Adolor 9.1.1 XOMA shall prepare, file prosecute be responsible for and maintain in shall control the Territory Prosecution and at its own costs, upon consultation with Santen, the Adolor Patents and any jointly owned patents. Adolor shall notify Santen Maintenance of the status XMet Patents. XOMA shall give AntriaBio an opportunity to review and comment on the text of all each patent filings (includingapplication within the Licensed Patents before filing, without limitation, the grant of any Adolor Patents) and, upon the request of Santen, and shall provide advance copies of any papers relating to the filing, prosecution, or maintenance of such Adolor Patents. For Adolor Patents and patent applications, and for jointly owned patents and patent applications, Santen shall reimburse Adolor for one-half of any and all costs for the filing, prosecution, or maintenance of such patents and patent applications incurred by Adolor. Adolor shall submit an invoice for reimbursement AntriaBio with a copy of such patent costs to Santen application as filed, together with notice of its filing date and Santen serial number. AntriaBio shall reimburse XOMA for [*]of all [*] incurred by XOMA in conducting the Prosecution and Maintenance of the XMet Patents, and shall pay such invoice within XOMA’s invoices therefor with thirty (30) days of submission by Adolor. Santen receipt thereof. 9.1.2 If XOMA elects not to file any patent application within the Licensed Patents or otherwise abandon the Prosecution and Maintenance of any patent application or patent within the Licensed Patents, then (a) XOMA shall provide AntriaBio with reasonable notice of such decision so as to permit AntriaBio to decide whether to assume such responsibilities (such notice shall, to the extent reasonably feasible for XOMA, be given no later than thirty (30) days prior to the next deadline to take any necessary action with the relevant patent office); and (b) AntriaBio shall have the right but not the obligation to audit control the Prosecution and Maintenance of such patent costs subject to reimbursement once per yearapplication or patent, at AntriaBio’s sole cost. Such audit rights shall expire twenty- four (24) months after an invoice is submitted [*] = Certain confidential information contained in this document, marked by Adolor for payment. (b) Subject to Section 8.04 (b)brackets, all amounts for patent applications paid by Santen under Section 8.02 (a) for each country of the Territory shall be creditable on a country-by-country basis against future Royalties payable to Adolor by Santen for each such country; provided, however, that no more than **% of the Royalties payable for any period in such country shall be paid by crediting amounts paid by Santen under Section 8.02(a), and further **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. 9.1.3 AntriaBio may elect, with respect to the omitted portions. provided that Santen may carry forward all amounts paid under Section 8.02(a) for crediting against future Royalties a particular Licensed Patent in a country to terminate its payment obligations hereunder with respect to such Licensed Patent in such country by written notice given to XOMA, to the extent reasonably feasible for AntriaBio, no later than thirty (30) days prior to the next deadline to take any necessary action with the relevant patent office with respect to such Licensed Patent. In such event, such Licensed Patent (and all Patents issuing therefrom) shall thereafter be excluded from the license granted to AntriaBio pursuant to Section 3.1 and shall no longer be deemed to be Licensed Patents hereunder. 9.1.4 Commencing on the fifth (5th) anniversary of the Effective Date, AntriaBio may elect by written notice to terminate its payment obligations under this Section 8.02(b) until 9.1.1 solely with respect to those XMet Patents that are not Licensed Patents. AntriaBio acknowledges that its agreement to reimburse the costs of such amounts are exhaustedXMet Patents in accordance with Section 9.1.1 prior to the 5th anniversary of the Effective Date is a material portion of the consideration to be paid by AntriaBio for the rights granted hereunder.

Prosecution and Maintenance of Patents. (a) Subject to any Adolor third party agreements, Adolor 9.1 LLI shall prepare, file prosecute and maintain in control the Territory and at its own costs, upon consultation with Santen, the Adolor Patents and any jointly owned patents. Adolor shall notify Santen of the status prosecution of all patent filings (includingapplications for Patents, without limitation, the grant of any Adolor Patents) and, upon the request of Santen, shall provide advance copies of any papers relating to the filing, prosecution, or maintenance of such Adolor Patents. For Adolor Patents and patent applications, and for jointly owned patents and patent applications, Santen shall reimburse Adolor for one-half of any and all costs for the filing, prosecution, or maintenance of such patents and patent applications incurred by Adolor. Adolor shall submit an invoice for reimbursement of such patent costs to Santen and Santen shall pay such invoice within thirty (30) days of submission by Adolor. Santen shall have the right to audit the patent costs subject to reimbursement once per year. Such audit rights shall expire twenty- four (24) months after an invoice is submitted by Adolor for payment. (b) Subject to Section 8.04 (b), all amounts for patent applications paid by Santen under Section 8.02 (a) for each country of the Territory shall be creditable on a country-by-country basis against future Royalties payable to Adolor by Santen for each such country; provided, however, that no more than **% LLI must use reasonable efforts to obtain broad patent coverage that will increase the value of the Royalties payable for any period in such country license granted herein to Licensee. LLI agrees that it shall be paid by crediting amounts paid by Santen under Section 8.02(a)pay the expenses of filing, prosecution and maintenance of the Patents, and further **=Certain information that it will not abandon (without refiling) or fail to maintain a Patent or application for a Patent without providing Licensee an opportunity to take ownership of such patent as provided hereafter. 9.2 LLI agrees to keep pending a continuation or division claiming priority of Serial No. 08/656,687, filed May 31, 1996, for a DYNAMIC RANGE DIMMER FOR GAS DISCHARGE LAMPS, until such time as Licensee agrees in writing that such an application need no longer be maintained. 9.3 LLI agrees to file, upon Licensee's request, an application for a broadening reissue of Xxxxxxxxx U.S. Patent No. 5,654,609 prior to August 5, 1999. 9.4 If Licensee so requests for one or more Patents, patent counsel for LLI shall consult with patent counsel for Licensee to discuss patent prosecution strategy before taking action on this page has been omitted and filed separately with any application for a Patent. In no event shall LLI or patent counsel for LLI take any action which would tend to invalidate, render unenforcable, or disclaim any rights under any Patent (other than terminal disclaimers required by law) without the Commission. Confidential treatment has been requested prior written consent of Licensee or patent counsel for Licensee. 9.5 Except as provided below, with respect to Improvements developed or acquired by LLI, if LLI declines to file and prosecute an application to obtain a Patent on such an Improvement, then Licensee may elect to file or take over the omitted portionsprosecution of any such patent application. provided that Santen may carry forward LLI shall assign such patent application to Licensee without further consideration, and Licensee shall bear all amounts paid under Section 8.02(a) for crediting against future Royalties expenses thereafter incurred in connection with such prosecution. In the event one or more patents owned by Licensee issue on such Improvements, LLI shall have a non-exclusive license to practice inventions claimed in such country under this Section 8.02(bpatents, provided it pays to Licensee a royalty of two and a half percent (2.5%) until of net sales of products covered by such amounts are exhaustedpatents. Notwithstanding the foregoing, in the event that LLI determines in good faith that the Improvement is a valuable trade secret, Licensee agrees not to file a patent application thereon if LLI can provide reasonable evidence that the Improvement can be used commercially in a manner that competitors cannot reverse engineer in less than three years, and that LLI has taken reasonable security measures to maintain the secrecy of the trade secret. 9.6 LLI agrees that all applications for Patents shall be filed first in the United States prior to filing in other countries. 9.7 If LLI determines that it wishes to abandon (without refiling) or no longer maintain an issued Patent or pending application for a Patent, it shall provide Licensee with a reasonable opportunity to take over the prosecution or maintenance of such patent or application. LLI shall assign such patent application to Licensee without further consideration, and Licensee shall bear all expenses thereafter incurred in connection with such prosecution and maintenance. 9.8 No later than nine (9) months following the filing date of any United States application for a Patent, LLI shall give written notice to Licensee or patent counsel for Licensee of its intention to file for foreign patent protection based on the priority of such U.S. application. If LLI determines that it does not wish to file for patent protection in one or more countries in which Licensee desires protection, Licensee may file for such protection on its own behalf and expense, and LLI shall assign such foreign patent application(s) to Licensee without further consideration.

Prosecution and Maintenance of Patents. (a) Subject to any Adolor third party agreements, Adolor 9.1.1 XOMA shall prepare, file prosecute be responsible for and maintain in shall control the Territory Prosecution and at its own costs, upon consultation with Santen, the Adolor Patents and any jointly owned patents. Adolor shall notify Santen Maintenance of the status XMet Patents. XOMA shall give AntriaBio an opportunity to review and comment on the text of all each patent filings (includingapplication within the Licensed Patents before filing, without limitation, the grant of any Adolor Patents) and, upon the request of Santen, and shall provide advance copies of any papers relating to the filing, prosecution, or maintenance of such Adolor Patents. For Adolor Patents and patent applications, and for jointly owned patents and patent applications, Santen shall reimburse Adolor for one-half of any and all costs for the filing, prosecution, or maintenance of such patents and patent applications incurred by Adolor. Adolor shall submit an invoice for reimbursement AntriaBio with a copy of such patent costs to Santen application as filed, together with notice of its filing date and Santen serial number. AntriaBio shall reimburse XOMA for [*] of all [*] incurred by XOMA in conducting the Prosecution and Maintenance of the XMet Patents, and shall pay such invoice within XOMA’s invoices therefor with thirty (30) days of submission by Adolor. Santen receipt thereof. 9.1.2 If XOMA elects not to file any patent application within the Licensed Patents or otherwise abandon the Prosecution and Maintenance of any patent application or patent within the Licensed Patents, then (a) XOMA shall provide AntriaBio with reasonable notice of such decision so as to permit AntriaBio to decide whether to assume such responsibilities (such notice shall, to the extent reasonably feasible for XOMA, be given no later than thirty (30) days prior to the next deadline to take any necessary action with the relevant patent office); and (b) AntriaBio shall have the right but not the obligation to audit control the Prosecution and Maintenance of such patent costs subject to reimbursement once per year. Such audit rights shall expire twenty- four (24) months after an invoice is submitted by Adolor for paymentapplication or patent, at AntriaBio’s sole cost. (b) Subject 9.1.3 AntriaBio may elect, with respect to Section 8.04 (b), all amounts for patent applications paid by Santen under Section 8.02 (a) for each a particular Licensed Patent in a country of the Territory shall be creditable on a country-by-country basis against future Royalties payable to Adolor by Santen for each terminate its payment obligations hereunder with respect to such country; provided, however, that no more than **% of the Royalties payable for any period Licensed Patent in such country shall be paid by crediting amounts paid by Santen under Section 8.02(a)written notice given to XOMA, and further **=Certain information on this page has been omitted and filed separately to the extent reasonably feasible for AntriaBio, no later than thirty (30) days prior to the next deadline to take any necessary action with the Commission. Confidential treatment has been requested relevant patent office with respect to such Licensed Patent. In such event, such Licensed Patent (and all Patents issuing therefrom) shall thereafter be excluded from the omitted portions. provided that Santen may carry forward all amounts paid under license granted to AntriaBio pursuant to Section 8.02(a) for crediting against future Royalties in such country under this Section 8.02(b) until such amounts are exhausted3.1 and shall no longer be deemed to be Licensed Patents hereunder.

Prosecution and Maintenance of Patents. (a) Subject to any Adolor third party agreementsSonus shall, Adolor shall prepareat Sonus’ expense, file prosecute be responsible for prosecuting and maintain maintaining the Sonus Patent Rights in the countries in the Territory set forth on Exhibit B; provided however, that upon written request by Sonus, Schering shall, at no cost or expense to Schering, provide such assistance as may be reasonably necessary and as Schering is reasonably capable of providing to enable Sonus to comply with the administrative formalities necessary to maintain any Sonus Patent Rights. Schering may request that Sonus file patent applications in additional countries in the Territory if commercially practicable, at its own costs, upon consultation with Santen, the Adolor Patents and any jointly owned patentsSchering’s expense. Adolor Sonus shall notify Santen of keep Schering advised as to the status of all patent filings (includingthe Sonus Patent Rights by providing Schering, without limitationin a timely manner prior to their due date, the grant of any Adolor Patents) and, upon the request of Santen, shall provide advance with copies of any papers all official documents and correspondence relating to the filing, prosecution, or maintenance of such Adolor Patents. For Adolor Patents and patent applicationsmaintenance, and for jointly owned patents validity of the Sonus Patent Rights. Schering shall have twenty (20) Business Days after receipt to review and patent applicationscomment on such official documents and correspondence. Sonus shall give good faith consideration to Schering’s comments regarding patent-related documents, Santen provided however that the ultimate decision relating to patent-related documents shall reimburse Adolor for one-half remain with Sonus in its discretion, subject always to Section 9.04 and the other terms of this Agreement. The foregoing notwithstanding, Sonus shall not abandon prosecution of any patent application within the Sonus Patent Rights without first notifying Schering sixty (60) days prior to any bar date, of Sonus’ intention and all costs reason therefore, and providing Schering with reasonable opportunity to assume responsibility for the filing, prosecution, or maintenance and associated costs of such patents and patent applications incurred by Adolorapplications. Adolor shall submit an invoice In the event that Schering does agree to assume responsibility for reimbursement the prosecution, maintenance and associated costs of any such patent costs application, then Sonus shall transfer to Santen Schering, free of charge, its rights and Santen ownership in such patent application, and such patent application and any patents arising therefrom shall pay such invoice within thirty (30) days of submission by Adolor. Santen shall have the right to audit the patent costs subject to reimbursement once per year. Such audit rights shall expire twenty- four (24) months after an invoice is submitted by Adolor for payment. (b) Subject to Section 8.04 (b), all amounts for patent applications paid by Santen under Section 8.02 (a) for each country no longer form part of the Territory Sonus Patent Rights. Sonus shall be creditable on a country-by-country basis against future Royalties payable use Commercially Reasonable Efforts to Adolor by Santen for each such country; provided, however, ensure that no more than **% any patent application filed outside of the Royalties payable US prior to a filing in the US will be in a form sufficient to establish the date of original filing as a priority date for the purposes of a subsequent filing in the US. Sonus shall use Commercially Reasonable Efforts to ensure that any period patent application filed in such country shall the US prior to a filing outside the US will be paid by crediting amounts paid by Santen under Section 8.02(a), and further **=Certain information on this page has been omitted and filed separately with in a form sufficient to establish the Commission. Confidential treatment has been requested with respect to date of original filing as a priority date for the omitted portions. provided that Santen may carry forward all amounts paid under Section 8.02(a) for crediting against future Royalties purpose of a subsequent filing in such country under this Section 8.02(b) until such amounts are exhaustedany contracting state of the Paris Convention.

Prosecution and Maintenance of Patents. (a) Subject to any Adolor third party agreements10.1 UNIVERSITY shall apply for, Adolor shall prepareprosecute, file prosecute maintain, and maintain own all PATENT RIGHTS in the Territory United States and foreign countries; provided however, LICENSEE shall have reasonable opportunities to designate countries in which it desires UNIVERSITY to file, at its own costsLICENSEE'S expense, upon consultation patent applications and to otherwise advise UNIVERSITY. UNIVERSITY may file any patent application not so designated by LICENSEE, at UNIVERSITY'S expense and LICENSEE shall have the option to reimburse UNIVERSITY for such expense and shall thereupon have the rights and obligations with Santenrespect thereto as are set forth in this Agreement, the Adolor Patents LICENSEE shall cooperate with UNIVERSITY in applying for, prosecuting and any jointly owned patents. Adolor maintaining said PATENT RIGHTS and UNIVERSITY shall notify Santen of the status of inform LICENSEE thereabout in a timely manner 10.2 Except for those applications and/or inventions which LICENSEE elects not to file or pay for and UNIVERSITY elects to file and pay for as set forth in Paragraph 9.1, LICENSEE shall pay all patent filings (includingfees and expenses, including without limitationlimitation attorney fees, the grant of any Adolor Patents) and, upon the request of Santen, shall provide advance copies of any papers relating to incurred by UNIVERSITY in connection with the filing, prosecution, or issuance and/or maintenance of any United States or foreign patent applications included in the PATENT RIGHTS, whether such Adolor Patentsfees and costs were incurred before or after the EFFECTIVE DATE of this Agreement. For Adolor Patents and patent applicationsUpon execution of this Agreement, and for jointly owned patents and patent applications, Santen LICENSEE shall reimburse Adolor UNIVERSITY for one-half of any and all costs reasonable expenses UNIVERSITY has incurred for the preparation, filing, prosecution, or prosecution and maintenance of such patents and patent applications incurred by Adolor. Adolor PATENT RIGHTS, Thereafter, UNIVERSITY shall submit an invoice for reimbursement of to LICENSEE documenting the patent-related costs incurred but unpaid to date in each such patent costs to Santen and Santen invoice LICENSEE shall be pay such invoice within thirty (30) days of submission by Adolorreceipt. Santen shall have the right to audit the patent costs subject to reimbursement once per year. Such audit rights shall expire twenty- four (24) months after an invoice is submitted by Adolor All applications for payment. (b) Subject to Section 8.04 (b), which LICENSEE pays all amounts for patent applications paid by Santen under Section 8.02 (a) for each country part of the Territory related expenses shall be creditable on a country-by-country basis against future Royalties payable to Adolor by Santen for each such country; provided, however, that no more than **% of the Royalties payable for any period in such country shall be paid by crediting amounts paid by Santen under Section 8.02(a), and further **=Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. provided that Santen may carry forward all amounts paid under Section 8.02(a) for crediting against future Royalties in such country additionally come under this Section 8.02(b) until such amounts are exhaustedlicense agreement.