Common use of Prosecution of Licensed Patents Clause in Contracts

Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2, and additional applications as the parties may subsequently agree. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and Licensed Patents. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents shall be sent by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 00000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE.

Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees to accept liaison 7.1 XXXXX XXXXXXX and financial responsibilities, ONTOGENY will share responsibility for patent prosecution as hereinafter set forth, for follows: XXXXX XXXXXXX will lead the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, management of prosecution of the Licensed Applications listed Patent using patent counsel reasonably acceptable to ONTOGENY, which counsel will use diligent efforts to prosecute the Licensed Patents in Section 1.2the best interest of ONTOGENY, XXXXX XXXXXXX, HHMI and the UNIVERSITY OF WASHINGTON. XXXXX XXXXXXX agrees to use reasonable efforts to keep such patent costs reasonable for the benefit of ONTOGENY, provided however, that the quality and scope of the Licensed Patent will not be jeopardized by such minimization. XXXXX XXXXXXX will require its patent counsel to provide an annual patent prosecution and maintenance budget to ONTOGENY with reasonable period for review. If in any year ONTOGENY disputes such annual patent prosecution and maintenance budget proposed by XXXXX XXXXXXX, then ONTOGENY will be responsible for all legal bills, up to the annual budget limit proposed by XXXXX XXXXXXX, until both parties resolve their dispute over such patent prosecution and maintenance budget for the year. XXXXX XXXXXXX' patent counsel will directly notify ONTOGENY and ONTOGENY's patent counsel, and additional applications provide ONTOGENY and ONTOGENY's patent counsel copies of any official communications from United States and foreign patent offices relating to said prosecution, as well as copies of relevant communications to the parties various patent offices so that ONTOGENY may subsequently agreebe informed and appraised of the continuing prosecution of Licensed Patent. Said financial responsibilities In addition, XXXXX XXXXXXX shall not only include cause ONTOGENY to be directly copied on all correspondence between XXXXX XXXXXXX and XXXXX XXXXXXX' patent counsel with regard to the costs status of prosecution but also the payment of maintenance fees, where required, to maintain said any and all patents and patent applications and patentscomprising Licensed Patents. ONTOGENY will have reasonable opportunities to participate in decision making on key decisions affecting filing, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of the Licensed Patent, including, without limitation reasonable opportunity to review the abandonment of any Licensed Patent or claims thereof, and XXXXX XXXXXXX will use reasonable efforts to incorporate ONTOGENY's reasonable suggestions regarding said prosecution. XXXXX XXXXXXX will use reasonable efforts to amend any patent application to include claims reasonably requested by ONTOGENY to protect Licensed Applications Product. No case will be abandoned without giving ONTOGENY at least thirty (30) days notice and opportunity to pursue the application. 7.2 Except as by mutual agreement between the parties, patent applications comprising the Licensed PatentsPatent are to be filed in the major world markets, which filing will be satisfied by filing in the following patent offices: United States, Canada, Japan, Australia and Europe. 7.3 If ONTOGENY demonstrates that it is not being adequately informed or apprised of the continuing prosecution of Licensed Patent or that ONTOGENY is not being provided with reasonable opportunities to participate in decision making as indicated in the above paragraph, ONTOGENY will assume lead management of the prosecution of the Licensed Patent, using patent counsel reasonably acceptable to XXXXX XXXXXXX (such patent counsel to understand that both XXXXX XXXXXXX and ONTOGENY are its clients), and ONTOGENY will thereafter provide XXXXX XXXXXXX with the same safeguards which ONTOGENY was due under Article 7.1 (except patents shall be prosecuted in the best interests of the patent owners). Notice Any such demonstration will involve reasonable written notice to XXXXX XXXXXXX specifically detailing ONTOGENY'S concern, and a reasonable opportunity, including a 90 day cure period, for XXXXX XXXXXXX to refute or cure the basis for ONTOGENY'S concern. ONTOGENY agrees to diligently prosecute or assist in prosecuting Licensed Patent. If after the cure period XXXXX XXXXXXX and ONTOGENY still cannot agree on a cure for ONTOGENY'S concern, both parties agree to submit the dispute to mediation as set forth in Article 17 below. 7.4 Within 45 days after receipt of a statement from XXXXX XXXXXXX, ONTOGENY will reimburse XXXXX XXXXXXX for all costs incurred by XXXXX XXXXXXX, including those costs incurred prior to the Effective Date, in connection with the preparation, filing and prosecution of all patent applications and maintenance of said Licensed Applications patents corresponding to the Invention. Such fees and Licensed Patents costs shall not include costs incurred by Xxxxx Xxxxxxx in the use of its own resources, such as employee time, and shall not extend to patenting fees and costs incurred by Xxxxx Xxxxxxx after termination of this Agreement. ONTOGENY will provide payment authorization to XXXXX XXXXXXX at least one (1) month before an action is due, provided that ONTOGENY has received timely notice of such action from XXXXX XXXXXXX. For the purposes of this Article 7.4, notice will be considered given to ONTOGENY when ONTOGENY and ONTOGENY's patent counsel is copied and is in receipt of material sent by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx XxxxxxXXXXX XXXXXXX' patent counsel. ONTOGENY will provide written authorization to XXXXX XXXXXXX and its patent attorney in response to all notices sent by XXXXX XXXXXXX' patent counsel. Failure to provide written authorization, Xxxx 000 Xxxxxxif adequate notice was given to ONTOGENY, XX 00000-0000 Ifshall constitute an ONTOGENY decision not to authorize an action. In any country where ONTOGENY elects not to authorize an action, for any reason, prosecution or maintenance of have a particular patent application filed or patent in to pay expenses associated with filing, prosecuting or maintaining a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said XXXXX XXXXXXX may file, prosecute and/or maintain a patent application or patent at its own expense and said for its own exclusive benefit and ONTOGENY thereafter shall not be licensed under such patent application or patent shall no longer be considered part application. 7.5 In the event that one or more of Licensed Applications or the Licensed Patents for purposes are the subject of this Agreement a Declaration of Interference by the U.S. Patent and Trademark Office as interfering with claims in a Harvard University or Columbia University patent(s) or patent application(s) which is also exclusively licensed by ONTOGENY, XXXXX XXXXXXX and the UNIVERSITY OF WASHINGTON agree to negotiate, in good faith, a reasonable settlement agreement simplifying issues involved in determining priority and/or to resolve respective rights with regard to any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the such patent applications constituting said Licensed Applications which may ultimately be the subject of interference proceedings, such that a mechanism for terminating the interference is developed which awards priority to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEEappropriate party.

Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees to accept liaison As between BioMarin and financial responsibilitiesAlliant, as hereinafter set forthBioMarin and its licensors will be responsible for filing, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2prosecuting, and additional applications as the parties may subsequently agreemaintaining all Licensed Patents. Said financial responsibilities Alliant shall not only include the bear all reasonable costs of prosecution but also the payment of maintenance feesand expenses incurred by BioMarin that are related to such filing, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and Licensed Patents. Notice of prosecution and maintenance of said Licensed Applications and the Licensed Patents shall be sent that are prosecuted by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 00000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain BioMarin during the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes term of this Agreement or any sublicense derived herefrom(“BioMarin Prosecuted Patents”). Within two (2) weeks BioMarin shall regularly consult with Alliant and make reasonable efforts to adopt Alliant’s suggestions regarding prosecution tactics and strategy for BioMarin Prosecuted Patents. BioMarin will keep Alliant advised of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories the status of the BioMarin Prosecuted Patents and a summary of current actions required provide Alliant with copies of all material correspondence and filings to and from the patent offices examining such BioMarin Prosecuted Patents, such as office actions, proposed responses and amendments, and notices of allowance. After the Acquisition Date, BioMarin will promptly notify Alliant in writing if BioMarin decides not to continue the prosecution of any pending case or not to maintain any issued patent included in the BioMarin Prosecuted Patents at least thirty (30) days before the pending case is abandoned or the issued patent is lapsed, and to the extent BioMarin has failed to provide a commercially reasonable position for not taking such action, Alliant may request that BioMarin grant Alliant the right to take over the prosecution of the pending case or the maintenance of the issued patent, which request BioMarin will not unreasonably deny. If the request is granted, BioMarin will designate and appoint Alliant and its duly authorized employees and agents as BioMarin’s agent and attorney-in-fact to prosecute any such pending case or to maintain any such patent applications constituting said Licensed Applications under the name of BioMarin and in connection therewith to execute, file, and deliver documents in the patent lawyer nominated by LICENSOR name of and on behalf of BioMarin. BioMarin will assist and fully cooperate with Alliant, at Alliant’s request and expense, in prosecuting any such pending case which BioMarin has decided not to continue prosecution of patents abandoned by LICENSEEprosecuting or in maintaining any such patent which BioMarin has decided not to continue maintaining.

Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications Patents listed in Section 1.2Schedule A, and additional applications as the parties may subsequently agree. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and Licensed Patents. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents shall be sent by express courier delivery to: Internal IP Counsel Attn: UA #04-034; UA # 06-011 Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 0000000000 Tel: 000-000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications Patents to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE.

Prosecution of Licensed Patents. 7.1.1 7.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2on Appendix A, and additional applications as the parties may subsequently agree. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep a patent lawyer selected by LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and Licensed PatentsPatent Rights. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents Patent Rights shall be sent by express courier delivery to: Internal IP Counsel Xxxxx X. Xxxxxx, Esq. Research & Technology Development Services Georgetown Xxxxxxxxxx Xxxxxxx Xxxxxx Xxxxx 000, Xxxxxxxx X 0000 Xxxxxxxxx Xxxx, X.X. Xxxxxxxxxx, X.X. 00000 And Xxxxx Xxxxxxxxx, Ph.D., Director Office of Technology Transfer The University of Arizona 000 P. X. Xxxxxx Xxxxxx, Xxxx 000 Xxx 000000 Xxxxxx, XX 00000-0000 if express mail: Xxxxxxx Bldg., Rm. 3205 0000 Xxxxxxxx Xxxx. Xxxxxx, XX 00000-0000 [+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do soprosecution. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. . 7.2 Within two (2) weeks of notification to LICENSOR by LICENSEELICENSEE of the identity of the patent lawyer, LICENSEE LICENSOR or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications to the patent lawyer nominated in accordance with Paragraph 7.1 above. 7.3 Each LICENSOR shall have the right at any time, by LICENSOR notice in writing and sent to LICENSEE by registered mail, to assume and continue at its own expense, direction of the prosecution of patents abandoned any of said Licensed Applications. Upon receipt by LICENSEELICENSEE of any such notice from a LICENSOR, and upon consent of the other LICENSOR, LICENSEE and the patent lawyer nominated in accordance herewith shall provide in two weeks from the time of notice an executed power of attorney and all the file histories of the patent applications constituting said Licensed Applications. Upon receipt of this documentation, LICENSEE and the patent attorney nominated by LICENSEE shall be relieved of all future responsibilities to prosecute the Licensed Applications to which the notice is directed. In which event, LICENSOR agrees to use its good faith efforts to apply for, seek prompt issuance of, and maintain during the term of this Agreement, Patent Rights to the extent necessary to cover both broadly and specifically Licensed Products. LICENSEE shall have reasonable opportunity to advise LICENSOR and shall cooperate with LICENSOR in such filing, prosecution and maintenance. LICENSOR shall use its good faith efforts to furnish LICENSEE with copies of any patent application sufficiently in advance of its anticipated filing date to give LICENSEE a reasonable opportunity to review and comment thereon. In this event, LICENSOR also agrees to furnish LICENSEE with copies of all substantive communications to and from U.S. and foreign patent offices regarding Licensed Applications and in good faith shall consider the reasonable comments of LICENSEE regarding all communications and filings to and from the respective patent office.

Prosecution of Licensed Patents. 7.1.1 7.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2, and additional applications as the parties may subsequently agreeApplications. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep a patent lawyer selected by LICENSOR informed of all steps in the prosecution and maintenance of said Patent Rights. Written approval will be required from LICENSOR to the patent lawyer selected by LICENSEE for actions concerning this patent. 7.2 Within two (2) weeks of notification to LICENSOR by LICENSEE of the identity of the patent lawyer, LICENSOR will request that its counsel furnish to the patent lawyer nominated in accordance with Paragraph 7.1 above: (a) Complete file histories of all of the patent applications constituting said Licensed Applications; and (b) An executed power of attorney or powers of attorney appointing such patent lawyer as attorney of record in connection with all of said Licensed Applications. 7.3 LICENSOR shall have the right at any time, by notice in writing and sent to LICENSEE by registered mail, to assume and continue at its own expense, direction of the prosecution of any of said Licensed Applications. Upon receipt by LICENSEE of any such notice from LICENSOR, LICENSEE and the patent lawyer nominated in accordance herewith shall provide in two weeks from the time of notice an executed power of attorney and all the file histories of the patent applications constituting said Licensed Applications. Upon receipt of this documentation, LICENSEE and the patent attorney nominated by LICENSEE shall be relieved of all future responsibilities to prosecute the Licensed Applications to which the notice is directed. In which event, LICENSOR agrees to use its good faith efforts to apply for, seek prompt issuance of, and maintain during the term of this Agreement, Patent Rights to the extent necessary to cover both broadly and specifically Licensed Products. LICENSEE shall have reasonable opportunity to advise LICENSOR and shall cooperate with LICENSOR in such filing, prosecution and maintenance. LICENSOR shall use its good faith efforts to furnish LICENSEE with copies of any patent application sufficiently in advance of its anticipated filing date to give LICENSEE a reasonable opportunity to review and comment thereon. 7.4 LICENSOR also agrees to furnish LICENSEE with copies of all substantive communications to and from U. S. and foreign patent offices regarding Licensed Applications and Licensed Patentsin good faith shall consider the reasonable comments of LICENSEE regarding all communications and filings to and from the respective patent office. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents shall be sent by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 00000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do soprosecution. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE.

Prosecution of Licensed Patents. 7.1.1 9.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSORGEORGETOWN, of the Licensed Applications listed in Section 1.2, and additional applications as the parties may subsequently agreeApplications. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR GEORGETOWN shall be required, if so desired by LICENSORGEORGETOWN, to keep LICENSOR a patent lawyer selected by GEORGETOWN informed of all steps in the prosecution and maintenance of said Patent Rights. Written approval will be required from GEORGETOWN to the patent lawyer selected by LICENSEE for actions concerning this patent. 9.2 Within two (2) weeks of notification to GEORGETOWN by LICENSEE of the identity of the patent lawyer, GEORGETOWN will furnish to the patent lawyer nominated in accordance with paragraph 9.1 above: (a) Complete file histories of all of the patent applications constituting said Licensed Applications and Licensed Patents. Notice Applications; and (b) An executed power of prosecution and maintenance attorney or powers of attorney appointing such patent lawyer as attorney of record in connection with all of said Licensed Applications Applications. 9.3 GEORGETOWN shall have the right at any time, by notice in writing and sent to LICENSEE by registered mail, to assume and continue at its own expense, direction of the prosecution of any of said Licensed Patents Applications. Upon receipt by LICENSEE of any such notice from GEORGETOWN, LICENSEE and the patent lawyer nominated in accordance herewith shall provide in two weeks from the time of notice an executed power of attorney and all the file histories of the patent applications constituting said Licensed Applications. Upon receipt of this documentation, LICENSEE and the patent attorney nominated by LICENSEE shall be sent by express courier delivery to: Internal IP Counsel Office relieved of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 00000-0000 all future responsibilities to prosecute the Licensed Applications to which the notice is directed. If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR GEORGETOWN will be notified in sufficient time to assume prosecution should LICENSOR desire to do soprosecution. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR Georgetown can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE.

Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2on Appendix A, and additional applications as the parties may subsequently agree. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep a patent lawyer selected by LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and Licensed PatentsPatent Rights. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents Patent Rights shall be sent by express courier delivery to: Internal IP Counsel Xxxxx X. Xxxxxx, Esq. Research & Technology Development Services Georgetown Xxxxxxxxxx Xxxxxxx Xxxxxx Xxxxx 000, Xxxxxxxx X 0000 Xxxxxxxxx Xxxx, X.X. Xxxxxxxxxx, X.X. 00000 And Xxxxx Xxxxxxxxx, Ph.D., Director Office of Technology Transfer The University of Arizona 000 P. X. Xxxxxx Xxxxxx, Xxxx 000 Xxx 000000 Xxxxxx, XX 00000-0000 if express mail: Xxxxxxx Bldg., Rm. 3205 0000 Xxxxxxxx Xxxx. Xxxxxx, XX 00000-0000 [+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do soprosecution. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE.

Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees to accept liaison 7.1 XXXXX XXXXXXX and financial responsibilities, XXXXX will share responsibility for patent prosecution as hereinafter set forth, for follows: XXXXX XXXXXXX will lead the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, management of prosecution of the Licensed Applications listed Patent(s) using patent counsel reasonably acceptable to CURIS, which counsel will use diligent efforts to prosecute the Licensed Patent(s) in Section 1.2the best interest of XXXXX, XXXXX XXXXXXX, HHMI and the UNIVERSITY OF WASHINGTON. XXXXX XXXXXXX agrees to use reasonable efforts to keep such patent costs reasonable for the benefit of CURIS, provided however, that the quality and scope of the Licensed Patent(s) will not be jeopardized by such minimization. XXXXX XXXXXXX’ patent counsel will directly notify CURIS and CURIS’s patent counsel, and additional applications provide CURIS and CURIS’s patent counsel copies of any official communications from United States and foreign patent offices relating to said prosecution, as well as copies of relevant communications to the parties various patent offices so that CURIS may subsequently agreebe informed and appraised of the continuing prosecution of Licensed Patent(s). Said financial responsibilities In addition, XXXXX XXXXXXX shall not only include cause CURIS to be directly copied on all correspondence between XXXXX XXXXXXX and XXXXX XXXXXXX’x patent counsel with regard to the costs status of prosecution but also the payment of maintenance fees, where required, to maintain said any and all patents and patent applications and patentscomprising Licensed Patent(s). CURIS will have reasonable opportunities to participate in decision making on key decisions affecting filing, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of the Licensed Patent(s), including, without limitation reasonable opportunity to review the abandonment of any Licensed Patent(s) or claims thereof, and XXXXX XXXXXXX will use reasonable efforts to incorporate CURIS’s reasonable suggestions regarding said prosecution. XXXXX XXXXXXX will use reasonable efforts to amend any patent application to include claims reasonably requested by CURIS to protect Licensed Applications Product(s). No case will be abandoned without giving CURIS at least thirty (30) days notice and opportunity to pursue the application. 7.2 Except as by mutual agreement between the parties, patent applications comprising the Licensed PatentsPatent(s) are to be filed in the major world markets, which filing will be satisfied by filing in the following patent offices: United States, Canada, Japan, Australia and Europe. 7.3 If CURIS demonstrates that it is not being adequately informed or apprised of the continuing prosecution of Licensed Patent(s) or that CURIS is not being provided with reasonable opportunities to participate in decision making as indicated in the above paragraph, CURIS will assume lead management of the prosecution of the Licensed Patent(s), using patent counsel reasonably acceptable to XXXXX XXXXXXX (such patent counsel to understand that both XXXXX XXXXXXX and XXXXX are its clients), and CURIS will thereafter provide XXXXX XXXXXXX with the same safeguards which CURIS was due under Article 7.1 (except patents shall be prosecuted in the best interests of the patent owners). Notice Any such demonstration will involve reasonable written notice to XXXXX XXXXXXX specifically detailing CURIS’ concern, and a reasonable opportunity, including a 90 day cure period, for XXXXX XXXXXXX to refute or cure the basis for CURIS’ concern. CURIS agrees to diligently prosecute or assist in prosecuting Licensed Patent(s). If after the cure period XXXXX XXXXXXX and XXXXX still cannot agree on a cure for CURIS’ concern, both parties agree to submit the dispute to mediation as set forth in Article 17 below. 7.4 Within 45 days after receipt of a statement from XXXXX XXXXXXX, XXXXX will reimburse XXXXX XXXXXXX for all costs incurred by XXXXX XXXXXXX, including those costs incurred prior to the Original Effective Date, in connection with the preparation, filing and prosecution of all patent applications and maintenance of said Licensed Applications patents corresponding to the Invention. Such fees and Licensed Patents costs shall not include costs incurred by XXXXX XXXXXXX in the use of its own resources, such as employee time, and shall not extend to patenting fees and costs incurred by XXXXX XXXXXXX after termination of this Agreement. CURIS will provide payment authorization to XXXXX XXXXXXX at least one (1) month before an action is due, provided that CURIS has received timely notice of such action from XXXXX XXXXXXX. For the purposes of this Article 7.4, notice will be considered given to CURIS when CURIS and CURIS’ patent counsel is copied and is in receipt of material sent by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx XxxxxxXXXXX XXXXXXX’ patent counsel. CURIS will provide written authorization to XXXXX XXXXXXX and its patent attorney in response to all notices sent by XXXXX XXXXXXX’ patent counsel. Failure to provide written authorization, Xxxx 000 Xxxxxxif adequate notice was given to CURIS, XX 00000-0000 Ifshall constitute a CURIS decision not to authorize an action. In any country where CURIS elects not to authorize an action, for any reasonhave a patent application filed or to pay expenses associated with filing, prosecution prosecuting or maintenance of maintaining a particular patent application or patent in within Licensed Patent(s), XXXXX XXXXXXX may file, prosecute and/or maintain a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent at its own expense and said for its own exclusive benefit and CURIS thereafter shall not be licensed under such patent application or patent shall no longer be considered part application. 7.5 In the event that one or more of the Licensed Patent(s) are the subject of a Declaration of Interference by the U.S. Patent and Trademark Office as interfering with claims in one or more Harvard University Patents/Applications or Licensed Patents for purposes of this Agreement or Columbia University Patents/Applications which is also exclusively licensed by XXXXX, XXXXX XXXXXXX and the UNIVERSITY OF WASHINGTON agree to negotiate, in good faith, a reasonable settlement agreement simplifying issues involved in determining priority and/or to resolve respective rights with regard to any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the such patent applications constituting said Licensed Applications which may ultimately be the subject of interference proceedings, such that a mechanism for terminating the interference is developed which awards priority to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEEappropriate party.

Prosecution of Licensed Patents. 7.1.1 7.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications Patents listed in Section 1.2Schedule A, and additional applications as the parties may subsequently agree. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and Licensed Patents. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents shall be sent by express courier delivery to: Internal IP Counsel Attn: UA #04-034; UA # 06-011 Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 0000000000 Tel: 000-000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. [+] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications Patents to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE. 7.2 If Licensee has not used reasonable efforts to prosecute patents, LICENSOR shall have the right at any time, by notice in writing and sent to LICENSEE by registered mail, to assume and continue at its own expense, direction of the prosecution of any of said Licensed Patents. Upon receipt by LICENSEE of any such notice from LICENSOR, LICENSEE and the patent lawyer nominated in accordance herewith shall provide in two weeks from the time of notice an executed power of attorney and all the file histories of the patent applications constituting said Licensed Patents. Upon receipt of this documentation, LICENSEE and the patent attorney nominated by LICENSEE shall be relieved of all future responsibilities to prosecute the Licensed Patents to which the notice is directed. In which event, LICENSOR agrees to use its good faith efforts to apply for, seek prompt issuance of, and maintain during the term of this Agreement, Licensed Patents to the extent necessary to cover both broadly and specifically Licensed Products. LICENSEE shall have reasonable opportunity to advise LICENSOR and shall cooperate with LICENSOR in such filing, prosecution and maintenance. LICENSOR shall use its good faith efforts to furnish LICENSEE with copies of any patent application sufficiently in advance of its anticipated filing date to give LICENSEE a reasonable opportunity to review and comment thereon. In this event, LICENSOR also agrees to furnish LICENSEE with copies of all substantive communications to and from U. S. and foreign patent offices regarding Licensed Patents and in good faith shall consider the reasonable comments of LICENSEE regarding all communications and filings to and from the respective patent office. 7.3 [+]

Prosecution of Licensed Patents. 7.1.1 8.1 LICENSEE agrees to accept liaison and financial responsibilities, as hereinafter set forth, for the prosecution, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2, and additional applications as the parties may subsequently agreeApplications. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep a patent lawyer selected by LICENSOR informed of all steps in the prosecution and maintenance of said Patent Rights. Written approval will be required from LICENSOR to the patent lawyer selected by LICENSEE for actions concerning this patent. 8.2 Within two (2) weeks of notification to LICENSOR by LICENSEE of the identity of the patent lawyer, LICENSOR will request that its counsel furnish to the patent lawyer nominated in accordance with Paragraph 8.1 above: (a) Complete file histories of all of the patent applications constituting said Licensed Applications; and (b) An executed power of attorney or powers of attorney appointing such patent lawyer as attorney of record in connection with all of said Licensed Applications. 8.3 LICENSOR shall have the right at any time, by notice in writing and sent to LICENSEE by registered mail, to assume and continue at its own expense, direction of the prosecution of any of said Licensed Applications. Upon receipt by LICENSEE of any such notice from LICENSOR, LICENSEE and the patent lawyer nominated in accordance herewith shall provide in two weeks from the time of notice an executed power of attorney and all the file histories of the patent applications constituting said Licensed Applications. Upon receipt of this documentation, LICENSEE and the patent attorney nominated by LICENSEE shall be relieved of all future responsibilities to prosecute the Licensed Applications to which the notice is directed. In which event, LICENSOR agrees to use its good faith efforts to apply for, seek prompt issuance of, and maintain during the term of this Agreement, Patent Rights to the extent necessary to cover both broadly and specifically Licensed Products. LICENSEE shall have reasonable opportunity to advise LICENSOR and shall cooperate with LICENSOR in such filing, prosecution and maintenance. LICENSOR shall use its good faith efforts to furnish LICENSEE with copies of any patent application sufficiently in advance of its anticipated filing date to give LICENSEE a reasonable opportunity to review and comment thereon. LICENSOR also agrees to furnish LICENSEE with copies of all substantive communications to and from U. S. and foreign patent offices regarding Licensed Applications and Licensed Patentsin good faith shall consider the reasonable comments of LICENSEE regarding all communications and filings to and from the respective patent office. Notice of prosecution and maintenance of said Licensed Applications and Licensed Patents shall be sent by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 00000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do soprosecution. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEE.

Prosecution of Licensed Patents. 7.1.1 LICENSEE agrees 8.4.1 As long as the Licensor continues to accept liaison undertake Development for and financial responsibilitieson behalf of the Licensee under this Agreement, as hereinafter set forththe Licensor shall have the first right, but not the obligation, for the prosecutionfiling, by a patent lawyer in independent practice, who shall be nominated by LICENSEE and approved by LICENSOR, of the Licensed Applications listed in Section 1.2, and additional applications as the parties may subsequently agree. Said financial responsibilities shall not only include the costs of prosecution but also the payment of maintenance fees, where required, to maintain said patent applications and patents, if issued, in force and effect for as long as possible. It is further agreed that the patent lawyer selected and paid by LICENSEE and approved by LICENSOR shall be required, if so desired by LICENSOR, to keep LICENSOR informed of all steps in the prosecution and maintenance of said Licensed Applications and all Licensed Patents. Notice All costs and expenses incurred by it relating to such filing, prosecution, and maintenance, including outside patent counsel fees and internal costs incurred in connection therewith shall be treated as a part of the Development Cost. At Licensee’s written request, Licensor shall keep Licensee informed of all material steps to be taken in the preparation and prosecution of all Licensed Patents in the Territory and shall furnish and provide Licensee with copies of correspondence to and from patent offices, and, to the extent reasonably practicable, permit Licensee an opportunity to offer its comments thereon before making a submission to a patent office and Licensor shall consider in good faith Licensee’s comments. Licensor will give reasonable notice to Licensee, but in any event at least ninety (90) days advance written notice, before deciding to abandon the prosecution, maintenance or defence of any Licensed Patent in the Territory, and Licensee shall, upon receipt of such notice, be entitled to assume and thereafter direct such prosecution and maintenance, cost of which shall be borne as part of the Development Cost. Upon provision of written notice by Licensee to Licensor of its desire to assume control of such activities, the Licensor shall, and shall cause any patent counsel engaged by Licensor to, promptly transfer all relevant documents and records, and provide all such other reasonably necessary support to Licensee in order to promptly and fully transfer such activities to Licensee. Licensee has the right but not the obligation to engage any patent counsel engaged by the Licensor for assuming any of the filing, prosecution or maintenance going forward. 8.4.2 Once Development has ceased by the Licensor under this Agreement, Licensee shall be solely entitled and responsible for the preparation, filing, prosecution and maintenance of said Licensed Applications and all Licensed Patents and Licensor shall provide Licensee with all assistance as may be sent by express courier delivery to: Internal IP Counsel Office of Technology Transfer The University of Arizona 000 X. Xxxxxx Xxxxxx, Xxxx 000 Xxxxxx, XX 00000-0000 If, for any reason, prosecution or maintenance of a particular patent application or patent reasonably requested in a particular country is to be abandoned by LICENSEE, LICENSOR will be notified in sufficient time to assume prosecution should LICENSOR desire to do so. LICENSEE shall bear all cost to maintain the patent prosecution until such time that LICENSOR can assume patent prosecution. LICENSEE, by abandonment of any particular patent application or patent, terminates its rights under Article 3 in said patent application or patent and said patent application or patent shall no longer be considered part of Licensed Applications or Licensed Patents for purposes of this Agreement or any sublicense derived herefrom. Within two (2) weeks of notification to LICENSOR by LICENSEE, LICENSEE or its current patent counsel will furnish complete file histories and a summary of current actions required of all of the patent applications constituting said Licensed Applications relation to the patent lawyer nominated by LICENSOR to continue prosecution of patents abandoned by LICENSEEsame.