Common use of Prosecution of Licensed Patents Clause in Contracts

Prosecution of Licensed Patents. Subject to the provisions of this Section 9.2, Xxxxxx, at its sole discretion and expense, will prosecute and determine the strategy of prosecution of the Licensed Patents. (a) Zosano shall, at least twice in each calendar year and at minimum intervals of six (6) months, during the Term provide Novo Nordisk with any changes to the list of Licensed Patents, including relevant filing, priority, and status information, beginning on the date that is six (6) calendar months following the Effective Date. (b) Xxxxxx shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term of any Licensed Patent. (c) If requested by Novo Nordisk, Zosano shall timely provide Novo Nordisk with copies of all material correspondence from any Patent Authority regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52 (d) If requested by Novo Nordisk, Zosano shall provide Novo Nordisk with a copy of any proposed filing with any Patent Authority in connection with proceedings before any Patent Authority with Licensed Patents and shall provide to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to comment on any such proposed filing with respect to such Licensed Patents, which comments Xxxxxx shall consider in good faith. (e) If Xxxxxx elects to discontinue prosecution or maintenance of any Licensed Patent, Xxxxxx shall so advise Novo Nordisk in writing at least sixty (60) calendar days in advance of such discontinuance and, if requested by Novo Nordisk, shall discuss with Novo Nordisk Zosano’s reasons for such discontinuance. If requested by Novo Nordisk and at Novo Nordisk’s cost, Xxxxxx will or authorize Novo Nordisk to take action to prevent such abandonment of such Licensed Patent, unless Xxxxxx has a material business or legal reason for not taking such action. (f) In connection with Section 6.4, for Licensed Patents, which Novo Nordisk lists in the Orange Book for the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent Authority.

Prosecution of Licensed Patents. Subject to the provisions of this Section 9.2, Xxxxxx, at its sole discretion and expense, will prosecute and determine the strategy of prosecution of the Licensed Patents. (ai) Zosano Emisphere shall, at least twice in each calendar year Calendar Year and at minimum intervals of six (6) five months, during the Term provide Novo Nordisk with any changes to the a list of Licensed Patents, including Patents providing relevant filing, priority, and status informationinformation (the “Semiannual Licensed Patent Report”), beginning on the date that is six (6) calendar months following the Effective Date. (bii) Xxxxxx Emisphere shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, information it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term of any Licensed Patent, as long as doing so would not I violate the attorney-client privilege between Emisphere and its attorneys. (ciii) If requested by Novo Nordisk, Zosano Emisphere shall timely provide Novo Nordisk with copies of all material correspondence from and to any Patent Authority or any Third Party, excluding correspondence from Emisphere’s outside counsels to Emisphere, regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52. (div) If requested by Novo Nordisk, Zosano Emisphere shall provide Novo Nordisk with a copy of any proposed filing with any Patent Authority or any proposed written communication to a Third Party, excluding communications from Emisphere’s outside counsels, in connection with proceedings before any Patent Authority with in the Licensed Patents and shall provide permit to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to review and comment on any such proposed filing with respect to such Licensed Patents. Notwithstanding the foregoing and for the avoidance of doubt, which comments Xxxxxx Emisphere shall consider in good faithhave the sole decision-making authority over any and all filings with any Patent Authority. (ev) For any Licensed Patent covering a Program Carrier that has not been deselected under Section 2.2 (h) of this Agreement by Novo Nordisk for which Novo Nordisk is the sole licensee of such Program Carrier, Emisphere shall not make any disclaimer of term or subject matter of any Licensed Patents without Novo Nordisk’s prior written consent; provided, however, that Novo Nordisk shall not unreasonably withhold or delay such consent with respect to Emisphere filing a terminal disclaimer in the course of prosecuting a patent application in the United States that Emisphere deems reasonably necessary to advance such prosecution. For any patent application in the Emisphere Intellectual Property for which Novo Nordisk is not the sole licensee, then the provisions of Section 8.1(a)(iv) shall apply. (vi) Emisphere shall not settle any inter partes proceedings before any Patent Authorities regarding Licensed Patents (including any opposition proceedings, interference proceedings, or any inter partes re-examination proceeding) covering a Program Carrier that has not been deselected by Novo Nordisk under Section 2.2 (h) of this Agreement without Novo Nordisk’s prior written consent which shall not be unreasonably withheld. This Section, however, shall not apply to any inter partes proceeding to which Novo Nordisk is a party. (vii) Emisphere agrees that it shall not abandon or narrow the claims of any Licensed Patents covering a Program Carrier that has not been deselected by Novo Nordisk under Section 2.2 (h) of this Agreement so that they no longer cover such Program Carriers (to the extent they already cover Program Carriers), their use or manufacture, in any country unless it has received Novo Nordisk’s written consent to do so which consent shall not be unreasonably withheld by Novo Nordisk or unless such Licensed Patents have been finally rejected. (viii) If Xxxxxx Emisphere elects to discontinue prosecution or maintenance of any Licensed Patent, Xxxxxx Emisphere shall so advise Novo Nordisk in writing at least sixty (60) calendar days in advance of such discontinuance and, if requested by Novo Nordisk, shall discuss with Novo Nordisk Zosano’s reasons for such discontinuance. If requested by Novo Nordisk and at Novo Nordisk’s cost, Xxxxxx will or authorize Novo Nordisk to take action to prevent such abandonment of Emisphere shall discuss in good faith whether such Licensed Patent, unless Xxxxxx has a material business or legal reason for not taking such actionPatent should be discontinued. (fix) In connection the event that a Selected Program Carrier becomes and remains an Exclusive Program Carrier as set forth in Section 2.2, Emisphere shall use reasonable efforts to prosecute patent applications, pending at the time Emisphere receives the Novo Nordisk notice in accordance with Section 6.42.2(b) and during the Term, for Licensed Patents, which Novo Nordisk lists in the Orange Book for the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent Authority[*****].

Prosecution of Licensed Patents. Subject to the provisions of this Section 9.2GSK, Xxxxxx, at its sole discretion and expense, will prosecute and determine the strategy of prosecution either directly or through an authorized Third Party licensee of the Licensed Patents. Patent Rights (a) Zosano shallan "Authorized Third Party"), at least twice in each calendar year and at minimum intervals of six (6) months, during the Term provide Novo Nordisk with any changes to the list of Licensed Patents, including relevant shall be responsible for filing, priorityprosecution and maintenance of the Licensed Patent Rights. GSK shall inform ViaCell of each patent issuing on the Licensed Patent Rights. If GSK or any Authorized Third Party abandons prosecution of any patent application under the Licensed Patent Rights or fails to maintain any issued patent under Licensed Patent Rights, and status informationsuch abandonment or failure to maintain results in sales of Products in a Major Market by a Third Party who is not a licensee of GSK or a sublicensee of GSK under Licensed Patent Rights, beginning on then upon written request from ViaCell, GSK shall reduce or rebate a portion of the date that is six (6) calendar months following License Maintenance Fees and Milestone Payments due in the Effective Date. (b) Xxxxxx future or previously made hereunder in an equitable amount to be negotiated in good faith by the parties. GSK shall provide Novo Nordisk with timely notification regarding any information, excluding notify ViaCell in sufficient time before GSK or an Authorized Third Party abandons the correspondence covered by clause (c) below, it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term prosecution of any patent application under the Licensed Patent. (c) If requested by Novo NordiskPatent Rights or stops maintaining any issued patent under Licensed Patent Rights, Zosano such that ViaCell shall timely provide Novo Nordisk with copies of all material correspondence from any Patent Authority regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52 (d) If requested by Novo Nordisk, Zosano shall provide Novo Nordisk with a copy have the opportunity to assume the prosecution of any proposed filing with any Patent Authority in connection with proceedings before any Patent Authority with Licensed Patents and shall provide to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to comment on such patent application or the maintenance of any such proposed filing with respect issued patent. ViaCell shall then have the right, but not the obligation, to assume the prosecution of any such Licensed Patents, which comments Xxxxxx shall consider patent application or the maintenance of any such issued patent in good faith. (e) If Xxxxxx elects GSK's name at ViaCell's expense. In the event that ViaCell may elect to discontinue assume such prosecution or maintenance of any a given application or patent under Licensed PatentPatent Rights, Xxxxxx GSK shall so advise Novo Nordisk remain the owner of such application or patent and it is understood that ViaCell's license rights shall not become greater than what is expressly granted to ViaCell under this Agreement, unless expressly agreed hereto in writing at least sixty (60) calendar days in advance of such discontinuance and, if requested by Novo Nordisk, shall discuss with Novo Nordisk Zosano’s reasons for such discontinuance. If requested by Novo Nordisk and at Novo Nordisk’s cost, Xxxxxx will or authorize Novo Nordisk to take action to prevent such abandonment of such Licensed Patent, unless Xxxxxx has a material business or legal reason for not taking such actionbetween the parties. (f) In connection with Section 6.4, for Licensed Patents, which Novo Nordisk lists in the Orange Book for the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent Authority.

Prosecution of Licensed Patents. Subject to the provisions of this Section 9.2, XxxxxxZosano, at its sole discretion and expense, will prosecute and determine the strategy of prosecution of the Licensed Patents. (a) Zosano shall, at least twice in each calendar year and at minimum intervals of six (6) months, during the Term provide Novo Nordisk with any changes to the list of Licensed Patents, including relevant filing, priority, and status information, beginning on the date that is six (6) calendar months following the Effective Date. (b) Xxxxxx Zosano shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term of any Licensed Patent. (c) If requested by Novo Nordisk, Zosano shall timely provide Novo Nordisk with copies of all material correspondence from any Patent Authority regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52. (d) If requested by Novo Nordisk, Zosano shall provide Novo Nordisk with a copy of any proposed filing with any Patent Authority in connection with proceedings before any Patent Authority with Licensed Patents and shall provide to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to comment on any such proposed filing with respect to such Licensed Patents, which comments Xxxxxx Zosano shall consider in good faith. (e) If Xxxxxx Zosano elects to discontinue prosecution or maintenance of any Licensed Patent, Xxxxxx Zosano shall so advise Novo Nordisk in writing at least sixty (60) calendar days in advance of such discontinuance and, if requested by Novo Nordisk, shall discuss with Novo Nordisk Zosano’s reasons for such discontinuance. If requested by Novo Nordisk and at Novo Nordisk’s cost, Xxxxxx Zosano will or authorize Novo Nordisk to take action to prevent such abandonment of such Licensed Patent, unless Xxxxxx Zosano has a material business or legal reason for not taking such action. (f) In connection with Section 6.4, for Licensed Patents, which Novo Nordisk lists in the Orange Book for the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent Authority.

Prosecution of Licensed Patents. Subject Unless and until assumed by Elanco, as provided below, KindredBio shall have the first right (but not the obligation) to control the provisions of this Section 9.2filing, Xxxxxx, at its sole discretion and expense, will prosecute and determine the strategy of prosecution of maintenance and using patent counsel of any patents and patent applications for the Licensed Patents. (a) Zosano shall, at least twice in each calendar year Technology. KindredBio shall keep Elanco reasonably informed of progress with regard to its prosecution and at minimum intervals of six (6) months, during the Term provide Novo Nordisk with any changes to the list of Licensed Patents, including relevant filing, priority, and status information, beginning on the date that is six (6) calendar months following the Effective Date. (b) Xxxxxx shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term maintenance of any Licensed Patent. (c) If requested Patents and filing of any new patent applications directed to Licensed Know-How, including by Novo Nordisk, Zosano shall timely provide Novo Nordisk providing Elanco with copies drafts of all material proposed substantive filings and correspondence from to any Patent Authority regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 relevant patent authority for KindredBio’s review and comment prior to the submission of 52 (d) If requested by Novo Nordisk, Zosano shall provide Novo Nordisk with a copy of any proposed filing with any Patent Authority in connection with proceedings before any Patent Authority with Licensed Patents and shall provide to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to comment on any such proposed filing with respect to such Licensed Patents, which comments Xxxxxx filings and correspondence. KindredBio shall consider in good faith. faith Elanco’s comments related to such Patents prior to submitting such filings and correspondence, provided that Elanco provides such comments to KindredBio within [***]days (eor a shorter period reasonably designated by KindredBio if [***]days is not practicable given the filing deadline) of receiving the draft filings and correspondence from Elanco. If Xxxxxx elects KindredBio: (i) seeks to discontinue abandon or cease the prosecution or maintenance of any Licensed Patent, Xxxxxx shall so advise Novo Nordisk Patent in writing at least sixty a particular jurisdiction (60without initiation of the prosecution and maintenance of a substitution therefor) calendar days in advance or to not file a utility application prior claiming priority to a provisional patent application prior to expiration of such discontinuance andprovisional application, if requested by Novo Nordisk, shall discuss with Novo Nordisk Zosano(ii) elects not to file a foreign counterpart to a Licensed Patent in a particular jurisdiction within [***]days of Elanco’s reasons request for such discontinuancefiling (or such shorter period has may be necessary to enable such filing within applicable filing deadlines) or (iii) elects not to file a patent application directed to a particular invention that is Licensed Know-How within [***]days of Elanco’s request for such filing (or such shorter period as may be necessary to enable such filing within applicable filing deadlines), then KindredBio shall provide reasonable prior written notice to Elanco of such intention to abandon or cease such prosecution or maintenance or election not to file (which notice shall be given no later than [***]days prior to the final, non-extendable deadline for any action that must be taken with respect to any such Licensed Patent or invention, as applicable, with the patent office). If requested In such case, then Elanco will have the right, by Novo Nordisk and at Novo Nordisk’s costwritten notice to KindredBio, Xxxxxx will or authorize Novo Nordisk to take action to prevent such abandonment of over, be responsible for, and control all patent preparation, filing, prosecution, and maintenance for Licensed Technology or any New Inventions under such Licensed PatentTechnology. Until Elanco expressly assumes such responsibility, unless Xxxxxx has a material business KindredBio shall continue to prosecute, maintain and enforce all Licensed Patents and will keep Elanco informed of all such matters and give due consideration to any input or legal reason for not taking such action. suggestions of Elanco, as provided above. Elanco shall have the first right to defend the Licensed Patents and other intellectual property rights included in the Licensed Technology (f) In connection with Section 6.4, for Licensed other than Joint Patents, which Novo Nordisk lists are addressed in Section 9.2(b) (Joint Patents)). Each Party shall bear the Orange Book cost of prosecuting, maintaining, and defending related to its own IP. To the extent Elanco has assumed responsibility for patent preparation, prosecution, maintenance and enforcement, Elanco shall (i) use diligent and commercially reasonable efforts, keeping KindredBio fully informed of all such matters and give due consideration to any input and suggestions of KindredBio and not make any settlements without KindredBio’s prior approval and (ii) bear the cost of prosecuting, maintaining and defending such Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent AuthorityPatents.

Prosecution of Licensed Patents. Subject (a) As between the Parties, IDT shall have the right and authority to prepare, file, prosecute and maintain the provisions of this Section 9.2, Xxxxxx, Licensed Patents at its sole discretion cost and expense, will prosecute and determine the strategy . IDT shall keep Graphite fully informed of prosecution of the Licensed Patents. (a) Zosano shall, at least twice in each calendar year and at minimum intervals of six (6) months, during the Term provide Novo Nordisk all material steps with any changes regard to the list preparation, filing, prosecution, and maintenance of such Licensed Patents, including relevant filing, priority, and status information, beginning on the date that is six (6) calendar months following the Effective Date. (b) Xxxxxx shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term of any Licensed Patent. (c) If requested by Novo Nordisk, Zosano shall timely provide Novo Nordisk with copies of all material correspondence from any Patent Authority regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52 (d) If requested by Novo Nordisk, Zosano shall provide Novo Nordisk providing Graphite with a copy of material communications to and from any proposed filing with patent authority in the Territory regarding such Licensed Patents, and by providing Graphite drafts of any Patent Authority material filings or responses to be made to such patent authorities in connection with proceedings before any Patent Authority with Licensed Patents and shall provide the Territory sufficiently in advance of submitting such filings or responses so as to Novo Nordisk allow for a reasonable opportunity (at least 10 calendar days) for Graphite to review and comment on thereon. IDT shall consider in good faith the requests and suggestions of Graphite with respect to such drafts and with respect to strategies for filing and prosecuting such Licensed Patents in the Territory. Notwithstanding the foregoing, IDT shall promptly inform Graphite of any adversarial patent office proceeding or sua sponte filing, including a request for, or filing or declaration of, any interference, opposition, or re-examination relating to a Licensed Patent in the Territory. The Parties shall thereafter consult and cooperate to determine a course of action with respect to any such proposed filing proceeding in the Territory and IDT shall consider in good faith all comments, requests and suggestions provided by Graphite. IDT shall not initiate any such adversarial patent office proceeding relating to a Licensed Patent in the Territory without first consulting Graphite. If IDT decides not to prepare, file, prosecute, or maintain a Licensed Patent in a country or other jurisdiction in the Territory, IDT shall provide reasonable prior written notice to Graphite of such intention (which notice shall, in any event, be given no later than thirty (30) days prior to the next deadline for any action that may be taken with respect to such Licensed PatentsPatent in such country or other jurisdiction), which comments Xxxxxx Graphite shall consider thereupon have the option, in good faith. (e) If Xxxxxx elects its sole discretion, to discontinue prosecution or assume the control and direction of the preparation, filing, prosecution, and maintenance of any such Licensed Patent, Xxxxxx shall so advise Novo Nordisk Patent at its expense in writing at least sixty (60) calendar days in advance such country or other jurisdiction. Upon Graphite’s written acceptance of such discontinuance andoption, if requested by Novo NordiskGraphite shall assume the responsibility and control for the preparation, shall discuss with Novo Nordisk Zosano’s reasons for such discontinuance. If requested by Novo Nordisk filing, prosecution, and at Novo Nordisk’s cost, Xxxxxx will or authorize Novo Nordisk to take action to prevent such abandonment maintenance of such Licensed Patent. In such event, unless Xxxxxx IDT shall reasonably cooperate with Graphite in such country or other jurisdiction. Where a Licensed Patent has a material business Valid Claim directed to a Licensed Product or legal reason the Exploitation thereof, Graphite shall have the shall be responsible for not taking such action. (f) In connection with Section 6.4making decisions regarding patent term extensions, including supplementary protection certificates and any other extensions that are now or become available in the future, wherever applicable, for Licensed Patents, which Novo Nordisk lists Patents in any country or other jurisdiction and for applying for any extension (including patent term extension and supplementary protection certificate) with respect to such Patents in the Orange Book Territory. IDT shall provide prompt and reasonable assistance, as requested by Graphite, including by taking such action as patent holder as is required under any applicable law to obtain such extension. Graphite shall pay all expenses in regard to obtaining such extension in the Territory. Notwithstanding the above, IDT shall have the sole right to apply for and obtain any Patent term extension or related extension of rights, including supplementary protection certificates and similar rights for the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by Patent anywhere in the Patent Authorityworld in all other circumstances.

Prosecution of Licensed Patents. Subject to the provisions of this Section 9.2, Xxxxxx, at its sole discretion and expense, will prosecute and determine the strategy of prosecution of the Licensed Patents. (ai) Zosano Emisphere shall, at least twice in each calendar year Calendar Year and at minimum intervals of six (6) five months, during the Term provide Novo Nordisk with any changes to the a list of Licensed Patents, including Patents providing relevant filing, priority, and status informationinformation (the “Semiannual Licensed Patent Report”), beginning on the date that is six (6) calendar months following the Effective Date. (bii) Xxxxxx Emisphere shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, information it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, or scope or of term of any Licensed Patent. (ciii) If requested by Novo Nordisk, Zosano Emisphere shall timely provide Novo Nordisk with copies of all material correspondence from and to any Patent Authority or any Third Party, excluding correspondence from Emisphere’s outside counsels to Emisphere, regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52. (div) If requested by Novo Nordisk, Zosano Emisphere shall provide Novo Nordisk with a copy of any proposed filing with any Patent Authority or any proposed written communication to a Third Party, excluding communications from Emisphere’s outside counsels in connection with proceedings before any Patent Authority with in the Licensed Patents and shall provide permit to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to review and comment on any such proposed filing with respect to such Licensed Patents, which comments Xxxxxx shall consider in good faith. (ev) Emisphere shall not make any disclaimer of term or subject matter of any Licensed Patents without Novo Nordisk’s prior written consent; provided, however, that Novo Nordisk shall not unreasonably withhold or delay such consent with respect to Emisphere filing a terminal disclaimer in the course of prosecuting a patent application in the United States that Emisphere deems reasonably necessary to advance such prosecution. (vi) Emisphere shall not settle any inter partes proceedings before any Patent Authorities regarding Licensed Patents (including any opposition proceedings, interference proceedings, or any inter partes re-examination proceeding) without Novo Nordisk’s prior written consent which shall not be unreasonably withheld, conditioned or delayed. (vii) Emisphere agrees that it shall not abandon or narrow the claims of any Licensed Patents so that they no longer cover Program Carriers, their use or manufacture, in any country unless it has received Novo Nordisk’s written consent to do so which consent shall not be unreasonably withheld, conditioned or delayed by Novo Nordisk or unless such Licensed Patents have been finally rejected and Novo Nordisk reasonably sees no prospect of overcoming such rejection at reasonable cost. (viii) If Xxxxxx Emisphere elects to discontinue prosecution or maintenance of any Licensed Patent, Xxxxxx Emisphere shall so advise Novo Nordisk in writing at least sixty (60) calendar days in advance of such discontinuance and, if requested by Novo Nordisk, shall discuss with discontinuance. Novo Nordisk Zosano’s reasons for shall have the right, but not the obligation, to continue such discontinuanceprosecution or maintenance of the Licensed Patents. If requested Novo Nordisk elects to continue prosecution or maintenance of any Licensed Patent, then such Licensed Patent shall be solely owned by Novo Nordisk (and at Novo Nordisk’s cost, Xxxxxx will or authorize be considered Novo Nordisk Intellectual Property) and Emisphere shall execute any documents and do such other acts as may be necessary to take action transfer ownership to prevent Novo Nordisk and in connection with the prosecution or maintenance of any such abandonment Licensed Patent and provide Novo Nordisk with all other assistance necessary to facilitate filing, prosecution, or maintenance of such Licensed Patent, unless Xxxxxx has a material business or legal reason for not taking such action. (f) In connection with Section 6.4, for Licensed Patents, which Novo Nordisk lists in the Orange Book for the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent Authority.

Prosecution of Licensed Patents. Subject to the provisions of this Section 9.2, Xxxxxx, at its sole discretion and expense, will prosecute and determine the strategy of prosecution of the Licensed Patents. (ai) Zosano Emisphere shall, at least twice in each calendar year Calendar Year and at minimum intervals of six (6) five months, during the Term provide Novo Nordisk with any changes to the a list of Licensed Patents, including Patents providing relevant filing, priority, and status informationinformation (the “Semiannual Licensed Patent Report”), beginning on the date that is six (6) calendar months following the Effective Date. (bii) Xxxxxx Emisphere shall provide Novo Nordisk with timely notification regarding any information, excluding the correspondence covered by clause (c) below, information it discovers during the Term that may be reasonably considered to adversely impact the validity, enforceability, scope or term of any Licensed Patent. (ciii) If requested by Novo Nordisk, Zosano Emisphere shall timely provide Novo Nordisk with copies of all material correspondence from any Patent Authority or any Third Party, excluding Emisphere’s outside counsels regarding Licensed Patents, provided such material correspondence cannot be obtained from a Patent Authority website. CONFIDENTIAL MATERIALS OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. DOUBLE ASTERISKS [**] DENOTE OMISSIONS. Page 29 of 52. (div) If requested by Novo Nordisk, Zosano Emisphere shall provide Novo Nordisk with a copy of any proposed filing with any Patent Authority or any proposed written communication to a Third Party, excluding Emisphere’s outside counsels in connection with proceedings before any Patent Authority with in the Licensed Patents and shall provide permit to Novo Nordisk a reasonable opportunity (at least 10 calendar days) to comment on approve any such proposed filing with respect to such Licensed Patents, which comments Xxxxxx shall consider in good faithsuch approval not to be unreasonably withheld. (ev) Emisphere shall not make any disclaimer of term or subject matter of any Licensed Patents without Novo Nordisk’s prior written consent; provided, however, that Novo Nordisk shall not unreasonably withhold or delay such consent with respect to Emisphere filing a terminal disclaimer in the course of prosecuting a patent application in the United States that Emisphere deems reasonably necessary to advance such prosecution. (vi) Emisphere shall not settle any inter partes proceedings before any Patent Authorities regarding Licensed Patents (including any opposition proceedings, interference proceedings, or any inter partes re-examination proceeding) without Novo Nordisk’s prior written consent which shall not be unreasonably withheld. (vii) Emisphere agrees that it shall not abandon or narrow the claims of any Licensed Patents so that they no longer cover Program Carriers, their use or manufacture, in any country unless it has received Novo Nordisk’s written consent to do so which consent shall not be unreasonably withheld by Novo Nordisk or unless such Licensed Patents have been finally rejected and Novo Nordisk reasonably sees no prospect of overcoming such rejection at reasonable cost. (viii) If Xxxxxx Emisphere elects to discontinue prosecution or maintenance of any Licensed Patent, Xxxxxx Emisphere shall so advise Novo Nordisk in writing at least sixty (60) calendar days in advance of such discontinuance and, if requested by Novo Nordisk, shall discuss with discontinuance. Novo Nordisk Zosano’s reasons for shall have the right, but not the obligation, to continue such discontinuanceprosecution or maintenance of the Licensed Patents. If requested Novo Nordisk elects to continue prosecution or maintenance of any Licensed Patent, then such Licensed Patent shall be solely owned by Novo Nordisk (and at Novo Nordisk’s cost, Xxxxxx will or authorize be considered Novo Nordisk Intellectual Property) and Emisphere shall execute any documents and do such other acts as may be necessary to take action transfer ownership to prevent Novo Nordisk and in connection with the prosecution or maintenance of any such abandonment Licensed Patent and provide Novo Nordisk with all other assistance necessary to facilitate filing, prosecution, or maintenance of such Licensed Patent, unless Xxxxxx has a material business or legal reason for not taking such action. (fix) In connection with Section 6.4, for Licensed Patents, which the event that Novo Nordisk lists in notifies Emisphere of its selection of an Exclusive Program Carrier, Emisphere shall thereafter use reasonable efforts to prosecute patent applications pending as of the Orange Book for Effective Date and/or during the Licensed Product, Zosano shall timely provide Novo Nordisk with any updated patent, reexamination or reissue numbers within fifteen (15) days of issuance by the Patent Authority[*****].