Common use of Prosecution Maintenance and Enforcement Clause in Contracts

Prosecution Maintenance and Enforcement. 8.2.1 ViroPharma shall have the first right, at its sole expense, to prepare, file, prosecute and maintain the Collaboration Supported Product Patents. ViroPharma shall give Halozyme an opportunity to review and comment on the text of each patent application included within the Collaboration Supported Product Patents before filing, shall supply Halozyme with a copy of such patent application as filed, together with notice of its filing date and serial number, and shall give Halozyme an opportunity to review and comment on the text of all correspondence received from any patent office. ViroPharma shall consider in good faith the interests of Halozyme in the prosecution of the Collaboration Supported Product Patents. Halozyme shall assist ViroPharma, upon request and at ViroPharma’s sole expense, and to the extent commercially reasonable, in connection therewith. If ViroPharma elects not to file any patent application included in the Collaboration Supported Product Patents in any country, or decides to abandon any such pending application or issued patent in any country, then ViroPharma shall provide written notice to Halozyme, and Halozyme shall have the right at its sole expense to assume control of the preparation, filing, prosecution and maintenance of such patent application or patent at its own expense. 8.2.2 ViroPharma shall have the first right to enforce the Collaboration Supported Product Patents against third party infringers. With respect to any infringement of the Collaboration Supported Product Patents by a third party, if ViroPharma fails to xxxxx such infringement or to file an action to xxxxx such infringement within ninety (90) days after a written request from Halozyme to do so, or if ViroPharma discontinues the prosecution of any such action after filing without abating such infringement, then Halozyme shall have the right to enforce the Collaboration Supported Product Patents against such third party infringer. With respect any action to enforce the Collaboration Supported Product Patents to xxxxx any infringement by a third party, all monies recovered upon the final judgment or settlement of any such action shall (a) first, be used to reimburse the costs and expenses (including reasonable attorneys’ fees and costs) of Halozyme and ViroPharma; and (b) second, (i) if ViroPharma brings such enforcement action, be treated as Net Sales, except for recovered punitive damages which are to be shared equally between the parties and (ii) if Halozyme brings such enforcement action, be shared equally between the parties. 8.2.3 ViroPharma shall have the sole right, at its sole expense, to prepare, file, prosecute, maintain and enforce the Collaboration Supported ViroPharma Biologic Patents. ViroPharma shall consider in good faith the interests of Halozyme in so doing. Halozyme shall assist ViroPharma, upon request and at ViroPharma’s sole expense, and to the extent commercially reasonable, in connection therewith. Nothing in this Agreement grants any ownership right in the Collaboration Supported ViroPharma Biologic Patents to Halozyme, and ViroPharma shall remain the sole owner of the Collaboration Supported ViroPharma Biologic Patents. 8.2.4 Halozyme shall have the sole right, at its sole expense, to prepare, file, prosecute, maintain and enforce the Collaboration Supported PH20 Patents and Licensed Patent Rights. Halozyme shall consider in good faith the interests of ViroPharma in so doing. ViroPharma shall assist Halozyme, upon request and at Halozyme’s sole expense, and to the extent commercially reasonable, in connection therewith. Nothing in this Agreement grants any ownership right in the Collaboration Supported PH20 Patents or the Licensed Patent Rights to ViroPharma, and Halozyme shall remain the sole owner of the Collaboration Supported PH20 Patents and the Licensed Patent Rights. 8.2.5 With respect to any substantial and continuing infringement of the Licensed Patent Rights by a third party making, using, offering for sale, selling or importing a product that consists of an Exclusive Biologic combined with PH20 Drug *** that is directed to the Exclusive Field in a country, on a country-by-country basis, if Halozyme fails to xxxxx such infringement or to file an action to xxxxx such infringement within *** (***) days (or *** (***) days in the case of a paragraph IV certification) after a written request from ViroPharma to do so, or if Halozyme discontinues the prosecution of any such action after filing without abating such infringement, then until such time as such infringement is abated, the royalty rate for the Product in such country shall be reduced by *** (***) of the royalty rate set forth in Section 4.4. 8.2.6 With respect any action to enforce the Licensed Patent Rights to xxxxx any infringement of the Licensed Patent Rights by a third party making, using, offering for sale, selling or importing a product that consists of an Exclusive Biologic combined with PH20 Drug *** that is directed to the Exclusive Field in a country, all monies recovered upon the final judgment or settlement of any such action shall be used (a) first, to reimburse the costs and expenses (including reasonable attorneys’ fees and costs) of Halozyme and ViroPharma; and (b) the remainder to be shared equally between the parties.

Prosecution Maintenance and Enforcement. 8.2.1 ViroPharma Intrexon shall have the first right, at its sole expense, to prepare, file, prosecute and maintain the Collaboration Supported Product Patents. ViroPharma Intrexon shall give Halozyme an opportunity to review and comment on the text of each patent application included within the Collaboration Supported Product Patents before filing, shall supply Halozyme with a copy of such patent application as filed, together with notice of its filing date and serial number, and shall give Halozyme an opportunity to review and comment on the text of all correspondence received from any patent office. ViroPharma Intrexon shall consider in good faith the interests of Halozyme in the prosecution of the Collaboration Supported Product Patents. Halozyme shall assist ViroPharmaIntrexon, upon request and at ViroPharmaIntrexon’s sole expense, and to the extent commercially reasonable, in connection therewith. If ViroPharma Intrexon elects not to file any patent application included in the Collaboration Supported Product Patents in any country, or decides to abandon any such pending application or issued patent in any country, then ViroPharma Intrexon shall provide written notice to Halozyme, and Halozyme shall have the right at its sole expense to assume control of the preparation, filing, prosecution and maintenance of such patent application or patent at its own expense. 8.2.2 ViroPharma Intrexon shall have the first right to enforce the Collaboration Supported Product Patents against third party infringers. With respect to any infringement of the Collaboration Supported Product Patents by a third party, if ViroPharma Intrexon fails to xxxxx such infringement or to file an action to xxxxx such infringement within ninety (90) days after a written request from Halozyme to do so, or if ViroPharma Intrexon discontinues the prosecution of any such action after filing without abating such infringement, then Halozyme shall have the right to enforce the Collaboration Supported Product Patents against such third party infringer. With respect any action to enforce the Collaboration Supported Product Patents to xxxxx any infringement by a third party, all monies recovered upon the final judgment or settlement of any such action shall (a) first, be used to reimburse the costs and expenses (including reasonable attorneys’ fees and costs) of Halozyme and ViroPharmaIntrexon; and (b) second, (i) if ViroPharma Intrexon brings such enforcement action, be treated as Net Sales, except for recovered punitive damages which are to be shared equally between the parties and (ii) if Halozyme brings such enforcement action, be shared equally between the parties. 8.2.3 ViroPharma Intrexon shall have the sole right, at its sole expense, to prepare, file, prosecute, maintain and enforce the Collaboration Supported ViroPharma Intrexon Biologic Patents. ViroPharma Intrexon shall consider in good faith the interests of Halozyme in so doing. Halozyme shall assist ViroPharmaIntrexon, upon request and at ViroPharmaIntrexon’s sole expense, and to the extent commercially reasonable, in connection therewith. Nothing in this Agreement grants any ownership right in the Collaboration Supported ViroPharma Intrexon Biologic Patents to Halozyme, and ViroPharma Intrexon shall remain the sole owner of the Collaboration Supported ViroPharma Intrexon Biologic Patents. 8.2.4 Halozyme shall have the sole right, at its sole expense, to prepare, file, prosecute, maintain and enforce the Collaboration Supported PH20 Patents and Licensed Patent Rights. Halozyme shall consider in good faith the interests of ViroPharma Intrexon in so doing. ViroPharma Intrexon shall assist Halozyme, upon request and at Halozyme’s sole expense, and to the extent commercially reasonable, in connection therewith. Nothing in this Agreement grants any ownership right in the Collaboration Supported PH20 Patents or the Licensed Patent Rights to ViroPharmaIntrexon, and Halozyme shall remain the sole owner of the Collaboration Supported PH20 Patents and the Licensed Patent Rights. Portions herein identified by [*****] have been omitted pursuant to a request for confidential treatment under Rule 24b-2 of the Securities Exchange Act of 1934, as amended. A complete copy of this document has been filed separately with the Securities and Exchange Commission. 8.2.5 With respect to any substantial and continuing infringement of the Licensed Patent Rights by a third party making, using, offering for sale, selling or importing a product that consists of an Exclusive Biologic combined with PH20 Drug ([*** ***]) that is directed to the Exclusive Field in a country, on a country-by-country basis, if Halozyme fails to xxxxx such infringement or to file an action to xxxxx such infringement within *** ([***) **] days (or *** ([***) **] days in the case of a paragraph IV certification) after a written request from ViroPharma Intrexon to do so, or if Halozyme discontinues the prosecution of any such action after filing without abating such infringement, then until such time as such infringement is abated, the royalty rate for the Product in such country shall be reduced by *** ([***) **] of the royalty rate set forth in Section 4.4. 8.2.6 With respect any action to enforce the Licensed Patent Rights to xxxxx any infringement of the Licensed Patent Rights by a third party making, using, offering for sale, selling or importing a product that consists of an Exclusive Biologic combined with PH20 Drug ([*** ***]) that is directed to the Exclusive Field in a country, all monies recovered upon the final judgment or settlement of any such action shall be used (a) first, to reimburse the costs and expenses (including reasonable attorneys’ fees and costs) of Halozyme and ViroPharmaIntrexon; and (b) the remainder to be shared equally between the parties.

Prosecution Maintenance and Enforcement. 8.2.1 ViroPharma shall have of New Patents and Joint Patents. (a) […***…] (i) Collegium will develop a written abstract of the first right, at its sole expense, patent concept with respect to prepare, file, prosecute Information or Inventions for review by Cypress. If Cypress provides written notification of interest in the developed abstract and maintain the Collaboration Supported Product Patents. ViroPharma shall give Halozyme an opportunity to review and comment Collegium files a patent application on the text developed abstract, then Cypress will reimburse Collegium for all of each Collegium’s out-of-pocket patent legal expenses to be incurred in the development and filing of the patent application included within the Collaboration Supported Product Patents before filing, shall supply Halozyme with a copy of such patent application as filed, together with notice of its filing date and serial number, and shall give Halozyme an opportunity to review and comment based on the text abstract; provided that such expenses are within a budget for such expenses agreed to in writing by Cypress and Collegium or are otherwise agreed to in writing by Cypress. Cypress will reimburse Collegium for such expenses within thirty (30) days after submission by Collegium to Cypress of all correspondence received from any patent officean invoice or invoices itemizing such incurred legal expenses. ViroPharma Collegium shall consider in good faith the interests requests and suggestions of Halozyme Cypress with respect to strategies for filing and prosecuting the New Patents. Collegium shall keep Cypress informed of progress with regard to the filing, prosecution and maintenance of the New Patents. Collegium acknowledges that the New Patents are subject to the Option granted under Section 6.1 and, in the prosecution event that Cypress exercises its Option under Article 6, that the License covers the New Patents. (ii) Should Cypress notify Collegium in writing of the Collaboration Supported Product Patents. Halozyme shall assist ViroPharmano interest in a written abstract of a patent concept presented by Collegium, upon request then such patent application and at ViroPharma’s sole expense, and to the extent commercially reasonable, in connection therewith. If ViroPharma elects not to file any patent application included in issued thereon will not be excluded from the Collaboration Supported Product Patents in any country, or decides to abandon any such pending application or issued patent in any country, then ViroPharma shall provide written notice to Halozyme, definition of New Patent and Halozyme Collegium shall have the right at its sole expense to assume control file and prosecute a patent application specific to the written abstract and maintain any patent issued thereon. If, subsequent to Cypress’ notification of no interest in a patent application, during the preparation, filing, prosecution and maintenance of Option Term Cypress decides to license such patent application or and any patent at its own expenseissued thereon, then such patent application and any patent issued thereon shall be included in the definition of New Patents and, then upon Cypress’ exercise of such Option, Cypress will reimburse Collegium for all reasonable patent legal expenses incurred by Collegium prior to Cypress exercising the Option. Should Cypress notify Collegium of no interest in a patent abstract and concept and subsequently decide to license the New Patent resulting from such abstract and exercise the Option, […***…]. 8.2.2 ViroPharma shall have the first right to enforce the Collaboration Supported Product Patents against third party infringers. With respect to any infringement of the Collaboration Supported Product Patents by a third party, if ViroPharma fails to xxxxx such infringement or to file an action to xxxxx such infringement within ninety (90) days after a written request from Halozyme to do so, or if ViroPharma discontinues the prosecution of any such action after filing without abating such infringement, then Halozyme shall have the right to enforce the Collaboration Supported Product Patents against such third party infringer. With respect any action to enforce the Collaboration Supported Product Patents to xxxxx any infringement by a third party, all monies recovered upon the final judgment or settlement of any such action shall (a) first, be used to reimburse the costs and expenses (including reasonable attorneys’ fees and costs) of Halozyme and ViroPharma; and (b) second, (i) if ViroPharma brings Cypress and Collegium shall promptly notify the other in writing of any alleged or threatened infringement of any patent included in the New Patents or Joint Patents of which they become aware and any alleged or threatened misappropriation of any Information included in the New Know-How. Both Parties shall use their reasonable efforts in cooperating with each other to terminate such enforcement action, be treated as Net Sales, except for recovered punitive damages which are to be shared equally between the parties and (ii) if Halozyme brings such enforcement action, be shared equally between the partiesinfringement without litigation. 8.2.3 ViroPharma (c) Prior to the exercise of the Option by Cypress under Article 6 or at any time Cypress does not have rights under the License, Collegium shall have the sole right, but not the obligation, to bring and control any action or proceeding with respect to infringement of a patent in the Joint Patents or New Patents or misappropriation of any Information in the New Know-How at its sole expense, to prepare, file, prosecute, maintain own expense and enforce the Collaboration Supported ViroPharma Biologic Patentsby counsel of its own choice. ViroPharma shall consider in good faith the interests of Halozyme in so doing. Halozyme shall assist ViroPharma, upon request and at ViroPharma’s sole expense, and to the extent commercially reasonable, in connection therewith. Nothing in this Agreement grants any ownership right in the Collaboration Supported ViroPharma Biologic Patents to Halozyme, and ViroPharma shall remain the sole owner of the Collaboration Supported ViroPharma Biologic Patents. 8.2.4 Halozyme Cypress shall have the sole right, at its sole own expense, to prepare, file, prosecute, maintain and enforce the Collaboration Supported PH20 Patents and Licensed Patent Rights. Halozyme shall consider be represented in good faith the interests of ViroPharma in so doing. ViroPharma shall assist Halozyme, upon request and at Halozyme’s sole expense, and to the extent commercially reasonable, in connection therewith. Nothing in this Agreement grants any ownership right in the Collaboration Supported PH20 Patents or the Licensed Patent Rights to ViroPharma, and Halozyme shall remain the sole owner of the Collaboration Supported PH20 Patents and the Licensed Patent Rights. 8.2.5 With respect to any substantial and continuing infringement of the Licensed Patent Rights by a third party making, using, offering for sale, selling or importing a product that consists of an Exclusive Biologic combined with PH20 Drug *** that is directed to the Exclusive Field in a country, on a country-by-country basis, if Halozyme fails to xxxxx such infringement or to file an action to xxxxx such infringement within *** (***) days (or *** (***) days in the case of a paragraph IV certification) after a written request from ViroPharma to do so, or if Halozyme discontinues the prosecution of any such action after filing without abating such infringementor proceeding by counsel of its own choice. At any time that Cypress has rights under the License, then until such time as such Cypress shall have the first right, but not the obligation, to bring and control any action or proceeding with respect to infringement is abated, of a patent included in the royalty rate for the Product in such country shall be reduced by *** (***) Joint Patents or New Patents or misappropriation of the royalty rate New Know-How at its own expense and by counsel of its own choice. Collegium shall have the right, at its own expense, to be represented in any such action or proceeding by counsel of its own choice. If Cypress fails to bring such an action or proceeding within (a) 60 days following the notice of alleged infringement or misappropriation or (b) 10 days before the time limit, if any, set forth in Section 4.4. 8.2.6 With respect any action the appropriate laws and regulations for the filing of such actions, whichever comes first, Collegium shall have the right to enforce the Licensed Patent Rights to xxxxx any infringement of the Licensed Patent Rights by a third party making, using, offering for sale, selling or importing a product that consists of an Exclusive Biologic combined with PH20 Drug *** that is directed to the Exclusive Field in a country, all monies recovered upon the final judgment or settlement of bring and control any such action or proceeding at its own expense and by counsel of its own choice, and Cypress shall have the right, at its own expense, to be represented in any such action by counsel of its own choice. (d) Neither Party shall have the right to settle any infringement or misappropriation action or proceeding under this Section 5.2 relating to any patents or know-how exclusively licensed to, or jointly owned by, the other Party hereunder without the prior written consent of such other Party. Except as otherwise agreed to by the Parties as part of a cost-sharing arrangement, any recovery realized as a result of such action or proceeding, after reimbursement of any litigation expenses of Collegium and Cypress, shall be used (a) first, retained by the Party that brought and controlled such action or proceeding pursuant to reimburse the costs and expenses (including reasonable attorneys’ fees and costs) of Halozyme and ViroPharma; and (b) the remainder to be shared equally between the partiesthis Agreement.