Common use of Prosecution and Maintenance of the Collaboration Patents Clause in Contracts

Prosecution and Maintenance of the Collaboration Patents. The prosecution and maintenance of Collaboration Patents shall be through a mutually selected patent counsel. Within sixty (60) days following the Effective Date, the Parties shall agree on a patent counsel (“Joint Counsel”) who shall be engaged by both Parties for the prosecution and maintenance of all Collaboration Patents. The following terms shall apply to each Collaboration Patent: Joint Counsel shall give BI and Zealand Pharma (or each Party’s designee) an opportunity to review the text of each application, office action response or other substantive document for a Collaboration Patent before filing with any patent office in the Territory, shall incorporate BI’s and Zealand Pharma’s (or each Party’s designee’s) reasonable comments with respect thereto, and shall supply BI and Zealand Pharma (or each Party’s designee) with a copy of each such application, office action response or other substantive document as filed, together with notice of its filing date and serial number. In the event that Zealand Pharma and BI provide Joint Counsel with conflicting instructions regarding any of filing, prosecuting or maintaining a Collaboration Patent, Joint Counsel shall make the Parties aware of such conflicting instructions and, if the Parties are not able to resolve such conflict within a reasonable time prior to the applicable filing deadline, BI shall have the final say as regards the preparation, filing prosecution and maintenance of Collaboration Patents, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. Where, pursuant to the procedures set forth above it is decided that an invention (or plurality of inventions) shall be described in a new Collaboration Patent application Joint Counsel: (i) shall file one or more priority applications describing such invention or inventions, each such priority application to be filed as a US provisional patent application; (ii) no later than the first anniversary of the filing date of the priority application first-filed in respect of such invention or invention(s), shall concurrently file a US utility patent application and a PCT international application, each identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s); and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. (iii) optionally shall concurrently file one or more direct national patent applications outside the US, identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s). Upon Zealand Pharma’s election by notice, Joint Counsel shall file the PCT application described in (ii) above in the German language. Such notice shall be given not later than nine (9) months before the expiration of the deadline for filing such PCT application. Should Zealand Pharma not so elect, Joint Counsel shall file the PCT application in the English language and shall, promptly after such filing in English and before publication of the application, de-designate the US as a designated state (for example, by filing Form PCT/IB/372 or equivalent). Both Parties shall reasonably cooperate with Joint Counsel in preparation, filing, prosecution and maintenance of patent applications for Collaboration Patent, including providing Joint Counsel with data and other information as reasonably appropriate with respect thereto. Joint Counsel shall keep BI and Zealand Pharma advised of the status of the prosecution and maintenance of Collaboration Patents, including actual and prospective patent filings for Collaboration Patents and shall provide each Party with advance copies of any papers related thereto. Joint Counsel shall promptly give notice to BI and Zealand Pharma of the grant, lapse, revocation, surrender, invalidation, or abandonment of any Collaboration Patents. BI shall be responsible for all fees and costs charged by Joint Counsel with respect to the prosecution and maintenance of Collaboration Patents and all other mutually agreed and approved out-of-pocket costs and expenses incurred by either Party in connection with such prosecution and maintenance of Collaboration Patents. Should BI decide that it does not wish to continue paying to the prosecution and maintenance of a particular Collaboration Patent, BI shall notify Zealand Pharma and Joint Counsel at least sixty (60) days in advance of the next deadline and shall allow Zealand Pharma to assume responsibility for such prosecution and maintenance payments incurred after thirty (30) days after receipt of BI’s notice. If Zealand Pharma assumes such responsibility, then: (i) Zealand Pharma may designate any counsel of its choice to handle the prosecution and maintenance of such Collaboration Patents and it shall cease to be part of the Collaboration Patents and no further royalty obligations shall exist under this Agreement with respect thereto, (ii) BI shall lose its licenses to such Collaboration Patents under Article 5, such Collaboration Patents may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Recognized Agents and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. customers, and (iii) BI shall and hereby does transfer and assign all right, title and interest in said Collaboration Patent to Zealand Pharma as the sole owner. If Zealand Pharma decides not to assume such responsibility, then it shall instruct Joint Counsel to abandon the prosecution and maintenance of such Collaboration Patent.

Prosecution and Maintenance of the Collaboration Patents. The prosecution and maintenance of Collaboration Patents shall be through a mutually selected patent counsel. Within sixty (60) days following the Effective Date, the Parties shall agree on a patent counsel (“Joint Counsel”) who shall be engaged by both Parties for the prosecution and maintenance of all Collaboration Patents. The following terms shall apply to each Collaboration Patent: Joint Counsel shall give BI and Zealand Pharma (or each Party’s designee) an opportunity to review the text of each application, office action response or other substantive document for a Collaboration Patent before filing with any patent office in the Territory, shall incorporate BI’s and Zealand Pharma’s (or each Party’s designee’s) reasonable comments with respect thereto, and shall supply BI and Zealand Pharma (or each Party’s designee) with a copy of each such application, office action response or other substantive document as filed, together with notice of its filing date and serial number. In the event that Zealand Pharma and BI provide Joint Counsel with conflicting instructions regarding any of filing, prosecuting or maintaining a Collaboration Patent, Joint Counsel shall make the Parties aware of such conflicting instructions and, if the Parties are not able to resolve such conflict within a reasonable time prior to the applicable filing deadline, BI shall have the final say as regards the preparation, filing prosecution and maintenance of Collaboration Patents, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. Where, pursuant to the procedures set forth above it is decided that an invention (or plurality of inventions) shall be described in a new Collaboration Patent application Joint Counsel: (i) shall file one or more priority applications describing such invention or inventions, each such priority application to be filed as a US provisional patent application; (ii) no later than the first anniversary of the filing date of the priority application first-filed in respect of such invention or invention(s), shall concurrently file a US utility patent application and a PCT international application, each identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s); and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions.and (iii) optionally shall concurrently file one or more direct national patent applications outside the US, identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s). Upon Zealand Pharma’s election by notice, Joint Counsel shall file the PCT application described in (ii) above in the German language. Such notice shall be given not later than nine (9) months before the expiration of the deadline for filing such PCT application. Should Zealand Pharma [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. not so elect, Joint Counsel shall file the PCT application in the English language and shall, promptly after such filing in English and before publication of the application, de-designate the US as a designated state (for example, by filing Form PCT/IB/372 or equivalent). Both Parties shall reasonably cooperate with Joint Counsel in preparation, filing, prosecution and maintenance of patent applications for Collaboration Patent, including providing Joint Counsel with data and other information as reasonably appropriate with respect thereto. Joint Counsel shall keep BI and Zealand Pharma advised of the status of the prosecution and maintenance of Collaboration Patents, including actual and prospective patent filings for Collaboration Patents and shall provide each Party with advance copies of any papers related thereto. Joint Counsel shall promptly give notice to BI and Zealand Pharma of the grant, lapse, revocation, surrender, invalidation, or abandonment of any Collaboration Patents. BI shall be responsible for all fees and costs charged by Joint Counsel with respect to the prosecution and maintenance of Collaboration Patents and all other mutually agreed and approved out-of-pocket costs and expenses incurred by either Party in connection with such prosecution and maintenance of Collaboration Patents. Should BI decide that it does not wish to continue paying to the prosecution and maintenance of a particular Collaboration Patent, BI shall notify Zealand Pharma and Joint Counsel at least sixty (60) days in advance of the next deadline and shall allow Zealand Pharma to assume responsibility for such prosecution and maintenance payments incurred after thirty (30) days after receipt of BI’s notice. If Zealand Pharma assumes such responsibility, then: (i) Zealand Pharma may designate any counsel of its choice to handle the prosecution and maintenance of such Collaboration Patents and it shall cease to be part of the Collaboration Patents and no further royalty obligations shall exist under this Agreement with respect thereto, (ii) BI shall lose its licenses to such Collaboration Patents under Article 5, such Collaboration Patents may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Recognized Agents and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. customers, and (iii) BI shall and hereby does transfer and assign all right, title and interest in said Collaboration Patent to Zealand Pharma as the sole owner. If Zealand Pharma decides not to assume such responsibility, then it shall instruct Joint Counsel to abandon the prosecution and maintenance of such Collaboration Patent. [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions.

Prosecution and Maintenance of the Collaboration Patents. The prosecution and maintenance of Collaboration Patents shall be through a mutually selected patent counsel. Within sixty (60) days following the Effective Date, the Parties shall agree on a patent counsel (“Joint Counsel”) who shall be engaged by both Parties for the prosecution and maintenance of all Collaboration Patents. The following terms shall apply to each Collaboration Patent: Joint Counsel shall give BI and Zealand Pharma (or each Party’s designee) an opportunity to review the text of each application, office action response or [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. other substantive document for a Collaboration Patent before filing with any patent office in the Territory, shall incorporate BI’s and Zealand Pharma’s (or each Party’s designee’s) reasonable comments with respect thereto, and shall supply BI and Zealand Pharma (or each Party’s designee) with a copy of each such application, office action response or other substantive document as filed, together with notice of its filing date and serial number. In the event that Zealand Pharma and BI provide Joint Counsel with conflicting instructions regarding any of filing, prosecuting or maintaining a Collaboration Patent, Joint Counsel shall make the Parties aware of such conflicting instructions and, if the Parties are not able to resolve such conflict within a reasonable time prior to the applicable filing deadline, BI shall have the final say as regards the preparation, filing filing, prosecution and maintenance of Collaboration Patents, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. Where, pursuant to the procedures set forth above it is decided that an invention (or plurality of inventions) shall be described in a new Collaboration Patent application application, Joint Counsel: (i) shall file one or more priority applications describing such invention or inventions, each such priority application to be filed as a US provisional patent application; (ii) no later than the first anniversary of the filing date of the priority application first-filed in respect of such invention or invention(s), shall concurrently file a US utility patent application and a PCT international application, each identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s); and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions.and (iii) optionally shall concurrently file one or more direct national patent applications outside the US, identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s). Upon Zealand Pharma’s election by notice, Joint Counsel shall file the PCT application described in (ii) above in the German English language. Such notice shall be given not later than nine (9) months before the expiration of the deadline for filing such PCT application. Should Zealand Pharma not so elect, Joint Counsel shall file the PCT application in the English language and shall, promptly after such filing in English and before publication of the application, de-designate the US as a designated state (for example, by filing Form PCT/IB/372 or equivalent). Both Parties shall reasonably cooperate with Joint Counsel in preparation, filing, prosecution and maintenance of patent applications for Collaboration Patent, including providing Joint Counsel with data and other information as reasonably appropriate with respect thereto. Joint Counsel shall keep BI and Zealand Pharma advised of the status of the prosecution and maintenance of Collaboration Patents, including actual and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. prospective patent filings for Collaboration Patents and shall provide each Party with advance copies of any papers related thereto. Joint Counsel shall promptly give notice to BI and Zealand Pharma of the grant, lapse, revocation, surrender, invalidation, or abandonment of any Collaboration Patents. BI shall be responsible for all fees and costs charged by Joint Counsel with respect to the prosecution and maintenance of Collaboration Patents and all other mutually agreed and approved out-of-pocket costs and expenses incurred by either Party in connection with such prosecution and maintenance of Collaboration Patents. Should BI decide that it does not wish to continue paying to for the prosecution and maintenance of a particular Collaboration Patent, BI shall notify Zealand Pharma and Joint Counsel at least sixty (60) days in advance of the next deadline and shall allow Zealand Pharma to assume responsibility for such prosecution and maintenance payments incurred after thirty sixty (3060) days after receipt of BI’s notice. If Zealand Pharma assumes such responsibility, then: (i) Zealand Pharma may designate any counsel of its choice to handle the prosecution and maintenance of such Collaboration Patents and it shall cease to be part of the Collaboration Patents and no further royalty obligations shall exist under this Agreement with respect thereto, (ii) BI shall lose its licenses to such Collaboration Patents under Article 5, such Collaboration Patents shall no longer be within the scope of any licenses granted by Zealand Pharma hereunder and may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Sublicensees and Recognized Agents and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. customersAgents, and (iii) BI shall and hereby does transfer and assign all right, title and interest in said Collaboration Patent to Zealand Pharma as the sole owner. If Zealand Pharma decides not to assume such responsibility, then it shall instruct Joint Counsel to abandon the prosecution and maintenance of such Collaboration Patent.

Prosecution and Maintenance of the Collaboration Patents. The prosecution and maintenance of Collaboration Patents shall be through a mutually selected patent counsel. Within sixty (60) days following the Effective Date, the Parties shall agree on a patent counsel (“Joint Counsel”) who shall be engaged by both Parties for the prosecution and maintenance of all Collaboration Patents. The following terms shall apply to each Collaboration Patent: Joint Counsel shall give BI and Zealand Pharma (or each Party’s designee) an opportunity to review the text of each application, office action response or other substantive document for a Collaboration Patent before filing with any patent office in the Territory, shall incorporate BI’s and Zealand Pharma’s (or each Party’s designee’s) reasonable comments with respect thereto, and shall supply BI and Zealand Pharma (or each Party’s designee) with a copy of each such application, office action response or other substantive document as [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. filed, together with notice of its filing date and serial number. In the event that Zealand Pharma and BI provide Joint Counsel with conflicting instructions regarding any of filing, prosecuting or maintaining a Collaboration Patent, Joint Counsel shall make the Parties aware of such conflicting instructions and, if the Parties are not able to resolve such conflict within a reasonable time prior to the applicable filing deadline, BI shall have the final say as regards the preparation, filing filing, prosecution and maintenance of Collaboration Patents, acting reasonably and in good faith to secure the most valuable protection available under applicable patent laws. Where, pursuant to the procedures set forth above it is decided that an invention (or plurality of inventions) shall be described in a new Collaboration Patent application application, Joint Counsel: (i) shall file one or more priority applications describing such invention or inventions, each such priority application to be filed as a US provisional patent application; (ii) no later than the first anniversary of the filing date of the priority application first-filed in respect of such invention or invention(s), shall concurrently file a US utility patent application and a PCT international application, each identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s); and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions.and (iii) optionally shall concurrently file one or more direct national patent applications outside the US, identically claiming priority to those priority patent application(s) filed in respect of such invention or invention(s). Upon Zealand Pharma’s election by notice, Joint Counsel shall file the PCT application described in (ii) above in the German English language. Such notice shall be given not later than nine (9) months before the expiration of the deadline for filing such PCT application. Should Zealand Pharma not so elect, Joint Counsel shall file the PCT application in the English language and shall, promptly after such filing in English and before publication of the application, de-designate the US as a designated state (for example, by filing Form PCT/IB/372 or equivalent). Both Parties shall reasonably cooperate with Joint Counsel in preparation, filing, prosecution and maintenance of patent applications for Collaboration Patent, including providing Joint Counsel with data and other information as reasonably appropriate with respect thereto. Joint Counsel shall keep BI and Zealand Pharma advised of the status of the prosecution and maintenance of Collaboration Patents, including actual and prospective patent filings for Collaboration Patents and shall provide each Party with advance copies of any papers related thereto. Joint Counsel shall promptly give notice to BI and Zealand Pharma of the grant, lapse, revocation, surrender, invalidation, or abandonment of any Collaboration Patents. [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. BI shall be responsible for all fees and costs charged by Joint Counsel with respect to the prosecution and maintenance of Collaboration Patents and all other mutually agreed and approved out-of-pocket costs and expenses incurred by either Party in connection with such prosecution and maintenance of Collaboration Patents. Should BI decide that it does not wish to continue paying to for the prosecution and maintenance of a particular Collaboration Patent, BI shall notify Zealand Pharma and Joint Counsel at least sixty (60) days in advance of the next deadline and shall allow Zealand Pharma to assume responsibility for such prosecution and maintenance payments incurred after thirty sixty (3060) days after receipt of BI’s notice. If Zealand Pharma assumes such responsibility, then: (i) Zealand Pharma may designate any counsel of its choice to handle the prosecution and maintenance of such Collaboration Patents and it shall cease to be part of the Collaboration Patents and no further royalty obligations shall exist under this Agreement with respect thereto, (ii) BI shall lose its licenses to such Collaboration Patents under Article 5, such Collaboration Patents shall no longer be within the scope of any licenses granted by Zealand Pharma hereunder and may not be used or sublicensed by BI and may, notwithstanding the non-assertion undertaking in Section 5.1 of this Agreement, be enforced against BI, its Affiliates, Sublicensees, Sublicensees and Recognized Agents and [***] Certain information in this document has been omitted and submitted separately to the Securities and Exchange Commission. Confidential treatment has been requested separately with respect to the omitted portions. customersAgents, and (iii) BI shall and hereby does transfer and assign all right, title and interest in said Collaboration Patent to Zealand Pharma as the sole owner. If Zealand Pharma decides not to assume such responsibility, then it shall instruct Joint Counsel to abandon the prosecution and maintenance of such Collaboration Patent.