Common use of Prosecution of Licensed Patents Clause in Contracts

Prosecution of Licensed Patents. (a) Except as provided below in Section 3.4(b), Licensor shall be responsible, at its sole discretion and expense, for: (i) preparing, filing, prosecuting, and maintaining all Licensed Patents in such jurisdiction; and (ii) conducting any interference, re-examination, reissue and opposition proceedings relating to the Licensed Patents in such jurisdiction (collectively, “Prosecution”). In connection with the foregoing: (x) Licensor shall regularly consult with Licensee, use reasonable efforts to accommodate comments from Licensee, and keep Licensee advised of the status of the Licensed Patents; and (y) Licensor shall provide to Licensee, for Licensee’s review and comments, copies of all material correspondence to and from the patent offices examining such Licensed Patents, including restriction requirements, office actions, proposed amendments and responses, and notices of allowance. (b) Notwithstanding Section 3.4(a), Licensee will have the right to file, at Licensee’s expense, one or more divisional, continuation, or continuation-in-part applications claiming priority to any of the Licensed Patents and which include only those claims directed primarily to the Field (collectively, “Field-Dedicated Patents”), and thereafter, be responsible for the Prosecution of those Field-Dedicated Patents. (c) If the patent office issues a restriction requirement in any application included in the Licensed Patent separating the claims into multiple groups, where at least one group is directed primarily to the Field and another group has no claims directed to the Field, and Licensor elects to prosecute the claims in the group which does not have any claims directed to the Field, then such application which no longer includes any claims directed to the Field will be excluded from the definition of Licensed Patents. (d) To the extent Licensee elects to file any divisional, continuation, or continuation-in-part applications under Section 3.4(b), Licensor will provide to Licensee or its designated representative copies of the files of the parent applications of such divisional, continuation or continuation-in-part applications. If any party elects at any time to abandon any Licensed Patent, such party will promptly notify the other party, and the other party will have the option to prosecute such Licensed Patent.

Prosecution of Licensed Patents. The Licensed Patents in existence as of the Effective Date are listed in Exhibit A hereto. The Parties shall update such Exhibit as appropriate (aand at least once per calendar year) to add to Exhibit A each Licensed Patent filed after the Effective Date by S3D or its Affiliates (or by Overland on S3D’s behalf) which would constitute a Licensed Patent hereunder. Except as otherwise provided below in this Section 3.4(b)10.1, Licensor as between the Parties, S3D shall have the sole right and authority to prepare, file, prosecute and maintain the Licensed Patents on a worldwide basis. Such Licensed Patents shall be responsiblefiled in the name of S3D, at and all rights thereto shall be in and remain in the name of S3D. S3D shall bear all costs of preparation, filing, prosecution and maintenance of the Licensed Patents (except for those patents or patent applications, as provided below, which S3D has elected not to file, prosecute or maintain, and instead Overland has filed and is prosecuting and maintaining). As used herein, “prosecution” of such Licensed Patents shall include, without limitation, all communication and other interaction with any patent office or patent authority having jurisdiction over a patent application in connection with pre-grant or post-grant proceedings. If S3D determines in its sole discretion to abandon or not maintain any Licensed Patent(s) that is being prosecuted or maintained by S3D, or to not file for rights in any particular country with respect to any Licensed Patent(s), then S3D shall provide Overland with written notice of such determination within a period of time reasonably necessary to allow Overland to determine its interest in such Licensed Patent(s) (including foreign filings). In the event Overland provides written notice expressing its interest in filing, prosecuting or maintaining such Licensed Patent(s), S3D shall transfer to Overland the responsibility of filing, prosecuting and/or maintaining the applicable Licensed Patent(s), but S3D shall retain title to such Licensed Patent(s). S3D shall, and expenseshall cause their Affiliates to, for: (i) preparingprovide Overland all reasonable assistance and cooperation in the patent prosecution efforts provided above in this Section 10.1, including providing any necessary powers of attorney and executing any other required documents or instruments for such prosecution. Overland shall thereafter bear all costs of preparation, filing, prosecuting, prosecution and maintaining all maintenance of such Licensed Patents in such jurisdiction; and (ii) conducting any interference, re-examination, reissue and opposition proceedings Patent(s). All communications between the Parties relating to the Licensed Patents in such jurisdiction (collectivelypreparation, “Prosecution”). In connection with the foregoing: (x) Licensor shall regularly consult with Licenseefiling, use reasonable efforts to accommodate comments from Licensee, and keep Licensee advised of the status prosecution or maintenance of the Licensed Patents; and (y) Licensor shall provide to Licensee, for Licensee’s review and comments, including copies of all material correspondence any draft or final documents or any communications received from or sent to and from the patent offices examining or patenting authorities with respect to such Licensed Patents, including restriction requirements, office actions, proposed amendments shall be considered Confidential Information and responses, and notices of allowance. (b) Notwithstanding Section 3.4(a), Licensee will have the right to file, at Licensee’s expense, one or more divisional, continuation, or continuation-in-part applications claiming priority to any of the Licensed Patents and which include only those claims directed primarily subject to the Field (collectively, “Field-Dedicated Patents”), and thereafter, be responsible for the Prosecution confidentiality provisions of those Field-Dedicated PatentsSection 9. (c) If the patent office issues a restriction requirement in any application included in the Licensed Patent separating the claims into multiple groups, where at least one group is directed primarily to the Field and another group has no claims directed to the Field, and Licensor elects to prosecute the claims in the group which does not have any claims directed to the Field, then such application which no longer includes any claims directed to the Field will be excluded from the definition of Licensed Patents. (d) To the extent Licensee elects to file any divisional, continuation, or continuation-in-part applications under Section 3.4(b), Licensor will provide to Licensee or its designated representative copies of the files of the parent applications of such divisional, continuation or continuation-in-part applications. If any party elects at any time to abandon any Licensed Patent, such party will promptly notify the other party, and the other party will have the option to prosecute such Licensed Patent.

Prosecution of Licensed Patents. From the Effective Date the Licensee shall, at the Licensee’s expense: (a) Except as provided below in Section 3.4(b), Licensor shall be responsible, at its sole discretion and expense, for: (i) preparing, responsible for the filing, prosecuting, prosecution and maintaining all Licensed Patents in such jurisdiction; and (ii) conducting any interference, re-examination, reissue and opposition proceedings relating to maintenance of the Licensed Patents (in such jurisdiction the name of the Licensor) for the maximum available period (collectivelyincluding, “Prosecution”where possible, by applying for supplementary protection certificates and other forms of extension). In connection , all in accordance with the foregoing: provisions of this clause 6.1; (xb) consult and agree with the Licensor shall regularly consult with Licenseein advance from time to time a patent filing, use reasonable efforts to accommodate comments from Licensee, prosecution and keep Licensee advised of the status maintenance strategy in respect of the Licensed Patents; (c) consult with the Licensor in advance in relation to all material changes to the patent claims or specifications intended to be made by the Licensee that would have the effect of reducing or limiting the scope of the Licensed Patents, and the Licensee shall not make any such changes without the prior written consent of the Licensor. Such consent shall not be unreasonably withheld or delayed provided that the Licensor has been given: (i) as much written notice as is practicable, and in any event no less than forty-two (42) Business Days’ notice (or such shorter period for response dictated by the relevant patent office) of such proposed changes; and and (yii) an opportunity to file divisionals, continuations and/or such other types of protection to cover any claims or subject matter that the Licensee intends to remove from the scope of the Licensed Patents. If the Licensor shall provide fails to Licenseerespond before the end of the forty-two (42) Business Day period (or such shorter period for response dictated by the relevant patent office), for Licensee’s review and comments, copies the Licensee may proceed with the proposed changes to the patent claims or specifications; (d) ensure that the Licensor promptly receives notification of all material official correspondence to and from in respect of the patent offices examining such Licensed Patents, including restriction requirements, office actions, proposed amendments and responses, and notices electronic or physical copies of allowance.all documents enclosed with such correspondence; and (be) Notwithstanding Section 3.4(a)subject to clause 6.2, Licensee will have the right to file, at Licensee’s expense, one or more divisional, continuation, or continuation-in-part applications claiming priority to any pay all fees in respect of the all Licensed Patents by their due date and which include only those claims directed primarily take all other actions necessary to obtain grant of and maintain Licensed Patents having the Field (collectively, “Field-Dedicated Patents”), and thereafter, be responsible for the Prosecution of those Field-Dedicated Patentsbroadest reasonable scope. (c) If the patent office issues a restriction requirement in any application included in the Licensed Patent separating the claims into multiple groups, where at least one group is directed primarily to the Field and another group has no claims directed to the Field, and Licensor elects to prosecute the claims in the group which does not have any claims directed to the Field, then such application which no longer includes any claims directed to the Field will be excluded from the definition of Licensed Patents. (d) To the extent Licensee elects to file any divisional, continuation, or continuation-in-part applications under Section 3.4(b), Licensor will provide to Licensee or its designated representative copies of the files of the parent applications of such divisional, continuation or continuation-in-part applications. If any party elects at any time to abandon any Licensed Patent, such party will promptly notify the other party, and the other party will have the option to prosecute such Licensed Patent.

Prosecution of Licensed Patents. (ai) Except as As between Licensee and Licensor, Licensor shall have the sole right but not the obligation for the filing, prosecution and maintenance of all Licensed Patents in the Licensor Territory at Licensor’s sole discretion and [***]. (ii) As between Licensee and Licensor, Licensor shall have the first right, but not the obligation, for the filing, prosecution and maintenance of all Licensed Patents (including the Joint Patent Rights) in the Licensee Territory [***], provided below that if Licensor intends to abandon, or not to file a patent application covering, any such Licensed Patents (including Joint Patent Rights) that is not sublicensed to Licensee under the Pfizer License Agreement in Section 3.4(bany country in the Licensee Territory (a “Non-Pfizer Puma Patent Right”), Licensor shall be responsibleprovide Licensee with a written notice of such intent at least [***] ([***]) days in advance of the relevant deadline. In such case: (X) Licensee will provide a written response to Licensor at least [***] ([***]) days in advance of the relevant deadline if Licensee wishes to, at file, prosecute and maintain (in its sole discretion and expensediscretion) such Non-Pfizer Puma Patent Right in such country; (Y) if Licensee provides the affirmative notice under clause (X) above, for: (i) preparing, Licensor shall promptly provide all files related to filing, prosecuting, prosecuting and maintaining all Licensed Patents in such jurisdictionNon-Pfizer Puma Patent Right to counsel designated by Licensee; and (iic) conducting any interferenceupon completion of the transfer of such files under clause (Y), re-examination, reissue and opposition proceedings relating to the Licensed Patents in such jurisdiction (collectively, “Prosecution”). In connection with the foregoing: (x) Licensor shall regularly consult with Licensee, use reasonable efforts to accommodate comments from Licensee, and keep Licensee advised of the status of the Licensed Patents; and (y) Licensor shall provide to Licensee, for Licensee’s review and comments, copies of all material correspondence to and from the patent offices examining such Licensed Patents, including restriction requirements, office actions, proposed amendments and responses, and notices of allowance. (b) Notwithstanding Section 3.4(a), Licensee will have the right to file, at Licensee’s expense, one or more divisional, continuation, or continuation-in-part applications claiming priority to any of the Licensed Patents and which include only those claims directed primarily to the Field (collectively, “Field-Dedicated Patents”), and thereafter, no longer be responsible for the Prosecution of those Fieldcosts and expenses relating to filing, prosecuting and maintaining (as applicable) such Non-Dedicated Patents. (c) If the patent office issues a restriction requirement Pfizer Puma Patent Right in any application included in the Licensed Patent separating the claims into multiple groups, where at least one group is directed primarily to the Field such country; and another group has no claims directed to the Field, and Licensor elects to prosecute the claims in the group which does not have any claims directed to the Field, then such application which no longer includes any claims directed to the Field will be excluded from the definition of Licensed Patents. (d) To solely for the extent Licensee elects purpose of determining the Royalty Term for the Product, the term “Licensed Patent” automatically shall be modified to file any divisional, continuation, or continuationexclude such Non-in-part applications under Section 3.4(b), Licensor will provide to Licensee or its designated representative copies Pfizer Puma Patent Right in such country as of the files of the parent applications of date Licensee provides such divisional, continuation or continuation-in-part applications. If any party elects at any time written request to abandon any Licensed Patent, such party will promptly notify the other party, and the other party will have the option to prosecute such Licensed PatentLicensor.

Prosecution of Licensed Patents. From the Effective Date the Licensee shall, at the Licensee’s expense:‌ (a) Except as provided below in Section 3.4(b), Licensor shall be responsible, at its sole discretion and expense, for: (i) preparing, responsible for the filing, prosecuting, prosecution and maintaining all Licensed Patents in such jurisdiction; and (ii) conducting any interference, re-examination, reissue and opposition proceedings relating to maintenance of the Licensed Patents (in such jurisdiction the name of the Licensor) for the maximum available period (collectivelyincluding, “Prosecution”where possible, by applying for supplementary protection certificates and other forms of extension). In connection , all in accordance with the foregoing: provisions of this clause 6.1; (xb) consult and agree with the Licensor shall regularly consult with Licenseein advance from time to time a patent filing, use reasonable efforts to accommodate comments from Licensee, prosecution and keep Licensee advised of the status maintenance strategy in respect of the Licensed Patents; (c) consult with the Licensor in advance in relation to all material changes to the patent claims or specifications intended to be made by the Licensee that would have the effect of reducing or limiting the scope of the Licensed Patents, and the Licensee shall not make any such changes without the prior written consent of the Licensor. Such consent shall not be unreasonably withheld or delayed provided that the Licensor has been given: (i) as much written notice as is practicable, and in any event no less than forty-two (42) Business Days’ notice (or such shorter period for response dictated by the relevant patent office) of such proposed changes; and and (yii) an opportunity to file divisionals, continuations and/or such other types of protection to cover any claims or subject matter that the Licensee intends to remove from the scope of the Licensed Patents. If the Licensor shall provide fails to Licenseerespond before the end of the forty-two (42) Business Day period (or such shorter period for response dictated by the relevant patent office), for Licensee’s review and comments, copies the Licensee may proceed with the proposed changes to the patent claims or specifications; (d) ensure that the Licensor promptly receives notification of all material official correspondence to and from in respect of the patent offices examining such Licensed Patents, including restriction requirements, office actions, proposed amendments and responses, and notices electronic or physical copies of allowance.all documents enclosed with such correspondence; and (be) Notwithstanding Section 3.4(a)subject to clause 6.2, Licensee will have the right to file, at Licensee’s expense, one or more divisional, continuation, or continuation-in-part applications claiming priority to any pay all fees in respect of the all Licensed Patents by their due date and which include only those claims directed primarily take all other actions necessary to obtain grant of and maintain Licensed Patents having the Field (collectively, “Field-Dedicated Patents”), and thereafter, be responsible for the Prosecution of those Field-Dedicated Patentsbroadest reasonable scope. (c) If the patent office issues a restriction requirement in any application included in the Licensed Patent separating the claims into multiple groups, where at least one group is directed primarily to the Field and another group has no claims directed to the Field, and Licensor elects to prosecute the claims in the group which does not have any claims directed to the Field, then such application which no longer includes any claims directed to the Field will be excluded from the definition of Licensed Patents. (d) To the extent Licensee elects to file any divisional, continuation, or continuation-in-part applications under Section 3.4(b), Licensor will provide to Licensee or its designated representative copies of the files of the parent applications of such divisional, continuation or continuation-in-part applications. If any party elects at any time to abandon any Licensed Patent, such party will promptly notify the other party, and the other party will have the option to prosecute such Licensed Patent.