Common use of Prosecution of Patent Rights Clause in Contracts

Prosecution of Patent Rights. 9.1 IURTC will prepare, file, prosecute, defend, and maintain the Patent Rights in its discretion in accordance with the terms and conditions herein using attorneys of its choosing. IURTC will instruct its attorneys to keep Spotlight informed of patent prosecution in the Field and to seek Spotlight’s comments and suggestions prior to taking material actions for the same (provided Spotlight is not in breach of this Agreement). 9.2 IURTC will authorize Spotlight to communicate directly with IURTC’s patent counsel. All information exchanged among IURTC’s counsel, the Parties, and/or the Inventors regarding the preparation, filing, prosecution, issue, defense, or maintenance of the Patent Rights will be deemed Confidential Information of IURTC. In addition, the Parties acknowledge and agree that, with regard to such preparation, filing, prosecution, issue, defense, and maintenance of the Patent Rights, the interests of the Parties as licensor and licensee are to obtain the strongest and broadest patent protection possible, and as such, are aligned and legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Patent Rights, including without limitation, privilege under the common interest doctrine and similar or related doctrines. 9.3 Spotlight will reimburse IURTC [***] within thirty (30) days after the Effective Date for expenses incurred prior to the Effective Date for the Patent Rights. 9.4 During the Term, Spotlight will reimburse IURTC for all reasonable and documented costs and expenses incurred by IURTC relating to the Patent Rights within thirty (30) days of receipt of billing invoices for such costs and expenses. 9.5 Notwithstanding anything to the contrary herein: 9.5.1 IURTC may request written confirmation from Spotlight that it will satisfy its reimbursement obligations for any particular fees or expenditures for the Patent Rights at least sixty (60) days in advance of the date on which such expenditure is to be made or such fee is due to be paid. If Spotlight elects not to pay in accordance with Paragraph 9.6 or fails to respond, then such Patent Rights will be removed from the Agreement, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to prosecute and maintain for IURTC’s sole use and benefit, to license or to abandon the patent applications or patents; 9.5.2 In addition, IURTC may, at its sole discretion, require payment of a retainer from Spotlight for filing fees prior to filing patent applications in foreign countries, foreign annuities, or other direct costs paid on behalf of IURTC for the Patent Rights to any patent office; 9.5.3 Should Spotlight become delinquent at any time for the reimbursement of patenting costs, IURTC may, at its sole discretion, require Spotlight to pay in advance of all future actions undertaken by counsel regarding the Patent Rights; and 9.5.4 In addition to and not in lieu of its other rights and remedies hereunder, IURTC will have no obligations to Spotlight under this Article 9 if Spotlight is delinquent in its payments. 9.6 If Spotlight elects not to incur fees or expenditures for any Patent Rights, Spotlight will give IURTC written notice of such election at least sixty (60) days in advance of the date on which such expenditure is to be made or such fee is due to be paid. Upon IURTC’s receipt of such notice, or if any payment due under this Article 9 is delinquent for more than thirty (30) days, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to continue prosecution and maintenance for IURTC’s sole use and benefit, to license or to abandon the patent applications or patents. 9.7 Spotlight and IURTC agree that the Patent Rights will be extended by all means provided by U.S. or foreign law or regulation, including without limitation extensions provided under U.S. law at 35 U.S.C. §154(b) and 156, and foreign supplementary protection certificates. Spotlight hereby agrees to provide IURTC with all necessary assistance in securing such extension, including without limitation, providing all information regarding applications for regulatory approval, approvals granted, and the timing of same. Spotlight acknowledges that extension under 35 U.S.C. §156 must be applied for within sixty (60) days of the date that a Licensed Product receives permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, and that Spotlight’s failure to promptly provide the necessary information or assistance to IURTC during such sixty day period will cause serious injury to IURTC, for which Spotlight will be liable at law. The Parties will also cooperate in selecting the Licensed Product each supplementary protection certificate referencing the Patent Rights will list.

Prosecution of Patent Rights. 9.1 IURTC will prepare(a) Subject to the terms of each In-License Agreement: (i) Tetraphase shall have the sole right, but not the obligation, to file, prosecute, defend, prosecute and maintain the all Tetraphase Patent Rights that are licensed to Tetraphase under the Harvard Agreement (the “Harvard Patent Rights”) and the first right, but not the obligation, to file, prosecute and maintain all other Tetraphase Patent Rights and all Joint Patent Rights. Licensee shall reimburse Tetraphase for (i) all costs incurred by Tetraphase after the Effective Date in its discretion filing, prosecuting and maintaining Tetraphase Patent Rights (for the avoidance of doubt, including amounts paid by Tetraphase after the Effective Date to any Third Party counterparty under any In-License Agreement, including amounts paid after the Effective Date to Harvard under Section 3.3 of the Harvard Agreement, with respect to such Third Party counterparty’s filing, prosecution and maintenance of applicable Tetraphase Patent Rights), (ii) all costs incurred by Tetraphase in accordance with the terms filing, prosecuting and conditions herein using attorneys of its choosing. IURTC will instruct its attorneys to keep Spotlight informed of patent prosecution maintaining Joint Patent Rights that Cover Licensed Products in the Field in the Territory and to seek Spotlight’s comments (iii) [**] percent ([**]%) of all costs incurred by Tetraphase in filing, prosecuting and suggestions prior to taking material actions for the same maintaining all other Joint Patent Rights, in each case (provided Spotlight is not in breach of this Agreement(i)-(iii)) within [**] days after receiving an invoice therefor. 9.2 IURTC will authorize Spotlight to communicate directly (ii) Tetraphase shall consult with IURTC’s patent counsel. All information exchanged among IURTC’s counsel, the Parties, and/or the Inventors regarding Licensee on the preparation, filing, prosecution, issue, defense, or prosecution and maintenance of the all Tetraphase Patent Rights will be deemed Confidential Information and Joint Patent Rights, and shall take into consideration the commercial strategy of IURTCLicensee in the Territory. In addition, the Parties acknowledge and agree that, Tetraphase shall furnish Licensee with regard copies of each document relevant to such preparation, filing, prosecution and maintenance at least [**] days prior to filing such document or making any payment due thereunder to allow for review and comment by Licensee and shall consider in good faith timely comments from Licensee thereon; provided that any comment provided by Licensee with [**] days of Licensee’s receipt of the applicable document shall be considered “timely” for purposes of this sentence. Tetraphase shall also furnish Licensee with copies of all final filings and responses made to any patent authority with respect to the Tetraphase Patent Rights and Joint Patent Rights in a timely manner following submission thereof. (iii) Licensee shall, without cost to Tetraphase, obtain all necessary assignment documents for Tetraphase, render all signatures that shall be necessary for the relevant patent filings and assist Tetraphase in all other reasonable ways that are necessary for the filing, prosecution, issue, defense, issuance and maintenance of the Patent Rights, the interests of the Parties as licensor and licensee are to obtain the strongest and broadest patent protection possible, and as such, are aligned and legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Patent Rights, including without limitation, privilege under the common interest doctrine and similar or related doctrines. 9.3 Spotlight will reimburse IURTC [***] within thirty (30) days after the Effective Date for expenses incurred prior to the Effective Date for the Joint Patent Rights. 9.4 During (iv) Should Tetraphase decide that it is no longer interested in maintaining or prosecuting a particular Tetraphase Patent Right (other than a Harvard Patent Right) or Joint Patent Right during the Term, Spotlight will reimburse IURTC for all it shall promptly provide Licensee written notice of this decision. Absent such written notice to Licensee, Tetraphase shall use commercially reasonable and documented costs and expenses incurred by IURTC relating efforts to the Patent Rights within thirty (30) days of receipt of billing invoices for such costs and expenses. 9.5 Notwithstanding anything to the contrary herein: 9.5.1 IURTC may request written confirmation from Spotlight that it will satisfy its reimbursement obligations for any particular fees or expenditures for the Patent Rights at least sixty (60) days in advance of the date on which such expenditure is to be made or such fee is due to be paid. If Spotlight elects not to pay in accordance with Paragraph 9.6 or fails to respondfile, then such Patent Rights will be removed from the Agreement, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to prosecute and maintain for IURTCall Tetraphase Patent Rights (other than Harvard Patent Rights) and all Joint Patent Rights that Cover Licensed Products in the Field in the Territory. Licensee may, upon written notice to Tetraphase, assume such prosecution and maintenance at Licensee’s sole use and benefitexpense. (b) Subject to the terms of each Licensee In-License Agreement: (i) Licensee shall have the sole right, but not the obligation, to license or file, prosecute and maintain all Licensee Patent Rights that Cover Licensed Products in the Field in the Territory, and the first right, but not the obligation, to abandon file, prosecute and maintain all other Licensee Patent Rights. Licensee agrees to use commercially reasonable efforts to file, prosecute and maintain all Licensee Patent Rights that Cover Licensed Products in the patent applications or patents;Territory. 9.5.2 In addition(ii) Licensee shall consult with Tetraphase on the preparation, IURTC mayfiling, prosecution and maintenance of all Licensee Patent Rights shall furnish Tetraphase with copies of each document relevant to such preparation, filing, prosecution and maintenance at its sole discretion, require payment of a retainer from Spotlight for filing fees least [**] days prior to filing patent applications such document or making any payment due thereunder to allow for review and comment by Tetraphase and shall consider in foreign countries, foreign annuities, or other direct costs paid on behalf good faith timely comments from Tetraphase thereon; provided that any comment provided by Tetraphase with [**] days of IURTC Tetraphase’s receipt of the applicable document shall be considered “timely” for the Patent Rights purposes of this sentence. Licensee shall also furnish Tetraphase with copies of all final filings and responses made to any patent office; 9.5.3 Should Spotlight become delinquent at any time for authority with respect to the reimbursement of patenting costs, IURTC may, at its sole discretion, require Spotlight to pay in advance of all future actions undertaken by counsel regarding the Patent Rights; and 9.5.4 In addition to and not in lieu of its other rights and remedies hereunder, IURTC will have no obligations to Spotlight under this Article 9 if Spotlight is delinquent in its payments. 9.6 If Spotlight elects not to incur fees or expenditures for any Patent Rights, Spotlight will give IURTC written notice of such election at least sixty (60) days in advance of the date on which such expenditure is to be made or such fee is due to be paid. Upon IURTC’s receipt of such notice, or if any payment due under this Article 9 is delinquent for more than thirty (30) days, the license granted to Spotlight for those patent applications or patents in the Licensee Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to continue prosecution and maintenance for IURTC’s sole use and benefit, to license or to abandon the patent applications or patentsin a timely manner following submission thereof. 9.7 Spotlight and IURTC agree that the Patent Rights will be extended by all means provided by U.S. or foreign law or regulation, including without limitation extensions provided under U.S. law at 35 U.S.C. §154(b) and 156, and foreign supplementary protection certificates. Spotlight hereby agrees to provide IURTC with all necessary assistance in securing such extension, including without limitation, providing all information regarding applications for regulatory approval, approvals granted, and the timing of same. Spotlight acknowledges that extension under 35 U.S.C. §156 must be applied for within sixty (60) days of the date that a Licensed Product receives permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, and that Spotlight’s failure to promptly provide the necessary information or assistance to IURTC during such sixty day period will cause serious injury to IURTC, for which Spotlight will be liable at law. The Parties will also cooperate in selecting the Licensed Product each supplementary protection certificate referencing the Patent Rights will list.

Prosecution of Patent Rights. 9.1 IURTC will prepare(a) Subject to Section 6.2(b), file, prosecute, defend, and maintain the Patent Rights in its discretion in accordance with the terms and conditions herein using attorneys of its choosing. IURTC will instruct its attorneys to keep Spotlight informed of patent prosecution in the Field and to seek Spotlight’s comments and suggestions prior to taking material actions for the same (provided Spotlight is not in breach of this Agreement). 9.2 IURTC will authorize Spotlight to communicate directly with IURTC’s patent counsel. All information exchanged among IURTC’s counsel, as between the Parties, and/or the Inventors regarding NewLink shall be responsible for and control the preparation, filing, prosecution, issue, defense, or maintenance of the Patent Rights will be deemed Confidential Information of IURTC. In addition, the Parties acknowledge and agree that, with regard to such preparation, filing, prosecution, issue, defense, prosecution and maintenance of all patents and patent applications within the Patent RightsRoyalty Bearing Patents, at NewLink’s sole expense and in its sole discretion; provided, however, that NewLink shall (i) provide AURI with a report on the interests status of the Parties as licensor prosecution of the Licensed Patents on a regular basis, but not in any case less than quarterly, (ii) provide AURI with copies of all material correspondence concerning the Licensed Patents to and licensee are to obtain from any patent office in the strongest and broadest patent protection possibleTerritory, and as such, are aligned and legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Patent Rights, (iii) provide AURI with drafts of each material filing (including without limitation, privilege under the common interest doctrine limitation draft patent applications and responses to office actions and similar or related doctrines. 9.3 Spotlight will reimburse IURTC [***] within thirty (30filings) days after the Effective Date for expenses incurred prior with respect to the Effective Date for the Patent Rights. 9.4 During the Term, Spotlight will reimburse IURTC for all Licensed Patents a reasonable and documented costs and expenses incurred by IURTC relating to the Patent Rights within thirty (30) days amount of receipt of billing invoices for such costs and expenses. 9.5 Notwithstanding anything to the contrary herein: 9.5.1 IURTC may request written confirmation from Spotlight that it will satisfy its reimbursement obligations for any particular fees or expenditures for the Patent Rights at least sixty (60) days time in advance of the anticipated filing date on which such expenditure is and reasonably consider any timely comments provided by AURI. (b) In the event that NewLink elects to be made not to maintain or such fee is due continue prosecution of any patent or patent application within the Licensed Patents, NewLink shall provide AURI written notice thereof at least [*] days before the applicable deadline and AURI shall have the right to be paidassume maintenance or continued prosecution of that Licensed Patent. If Spotlight elects not AURI decides to pay maintain or continue prosecution of such Licensed Patent, in accordance with Paragraph 9.6 or fails to respond, then such Patent Rights will be removed from the Agreement, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to prosecute and maintain for IURTC’s sole use and benefit, to license or to abandon the patent applications or patents; 9.5.2 In addition, IURTC may, at its sole discretion, require payment it shall so notify NewLink in writing and NewLink shall have the right, but not the obligation, to elect to reimburse AURI for its out-of-pocket expenses for such maintenance or continued prosecution. If AURI does so maintain or continue prosecution of a retainer from Spotlight for filing fees prior to filing patent applications in foreign countries, foreign annuities, or other direct costs paid on behalf of IURTC for the such Licensed Patent Rights to any patent office; 9.5.3 Should Spotlight become delinquent at any time for the reimbursement of patenting costs, IURTC may, at its sole discretion, require Spotlight to pay in advance of all future actions undertaken by counsel regarding the Patent Rights; and 9.5.4 In addition to and not in lieu of its other rights and remedies hereunder, IURTC will have no obligations to Spotlight under this Article 9 if Spotlight is delinquent in its payments. 9.6 If Spotlight NewLink elects not to incur fees or expenditures reimburse AURI for any Patent Rights, Spotlight will give IURTC written notice its out-of-pocket expenses of such election at least sixty (60) days in advance of the date on which maintenance or continued prosecution, then such expenditure is patent or patent application shall cease to be made or such fee is due to be paid. Upon IURTC’s receipt of such notice, or if any payment due under this Article 9 is delinquent for more than thirty (30) days, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to continue prosecution and maintenance for IURTC’s sole use and benefit, to license or to abandon the patent applications or patentsa Licensed Patent. 9.7 Spotlight and IURTC agree that the Patent Rights will be extended by all means provided by U.S. (c) NewLink may exercise any of its rights pursuant to this Section 6.2 through an Affiliate or foreign law or regulation, including without limitation extensions provided under U.S. law at 35 U.S.C. §154(b) and 156, and foreign supplementary protection certificates. Spotlight hereby agrees to provide IURTC with all necessary assistance in securing such extension, including without limitation, providing all information regarding applications for regulatory approval, approvals granted, and the timing of same. Spotlight acknowledges that extension under 35 U.S.C. §156 must be applied for within sixty (60) days of the date that a Licensed Product receives permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, and that Spotlight’s failure to promptly provide the necessary information or assistance to IURTC during such sixty day period will cause serious injury to IURTC, for which Spotlight will be liable at law. The Parties will also cooperate in selecting the Licensed Product each supplementary protection certificate referencing the Patent Rights will listSublicensee.

Prosecution of Patent Rights. 9.1 IURTC will prepare(a) Subject to Sections 6.2(c) and 6.2(d), file, prosecute, defend(i) Agenus shall have the sole right to Prosecute all Agenus Platform Patent Rights and the first right to Prosecute all Agenus Patent Rights, and maintain (ii) Incyte shall have the first right to Prosecute all Incyte Program Patent Rights in its discretion in accordance with and Joint Patent Rights and the terms and conditions herein using attorneys of its choosing. IURTC will instruct its attorneys sole right to keep Spotlight informed of patent prosecution in the Field and to seek Spotlight’s comments and suggestions prior to taking material actions for the same (provided Spotlight Prosecute all Incyte IP, including Patent Rights resulting from Incyte Other Inventions, that is not in breach of this Agreement)an Incyte Program Patent Right or Joint Patent Right. 9.2 IURTC will authorize Spotlight (b) With respect to communicate directly with IURTC’s patent counsel. All information exchanged among IURTC’s counselthe Agenus Patent Rights, the Parties, and/or the Inventors regarding the preparation, filing, prosecution, issue, defense, or maintenance of the Incyte Program Patent Rights will be deemed Confidential Information of IURTC. In addition, the Parties acknowledge and agree that, with regard to such preparation, filing, prosecution, issue, defense, and maintenance of the Joint Patent Rights, the interests Party responsible for Prosecution shall consult with and keep the other Party fully informed of important issues relating to the Parties as licensor and licensee are to obtain the strongest and broadest patent protection possible, and as such, are aligned and legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Prosecution of such Patent Rights, including without limitation, privilege under and shall furnish to the common interest doctrine and similar or related doctrines. 9.3 Spotlight will reimburse IURTC [***] within thirty (30) days after the Effective Date for expenses incurred other Party copies of documents relevant to such Prosecution in sufficient time prior to the Effective Date filing of such document to allow for review and comment by the Patent Rightsother Party and, to the extent possible in the reasonable exercise of its discretion, the Party responsible for Prosecution shall incorporate all of such comments. 9.4 During the Term, Spotlight will reimburse IURTC for all reasonable and documented costs and expenses incurred by IURTC relating (c) If Agenus elects not to the Prosecute any Agenus Patent Rights within thirty (30) days of receipt of billing invoices for such costs and expenses. 9.5 Notwithstanding anything whether worldwide or with respect to the contrary herein: 9.5.1 IURTC may request written confirmation from Spotlight that it will satisfy its reimbursement obligations for any particular fees country), including electing not to file a patent application with respect thereto or expenditures for the to allow any such Agenus Patent Rights to lapse or become abandoned or unenforceable, then Agenus shall promptly notify Incyte in writing (which such notice shall be at least sixty (60) days in advance prior to the lapse or abandonment of the date on which any such expenditure is to be made or such fee is due to be paid. If Spotlight elects not to pay in accordance with Paragraph 9.6 or fails to respond, then such Patent Rights will be removed from the Agreement, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Agenus Patent Rights). Thereafter, including without limitationIncyte may, to prosecute and maintain for IURTC’s sole use and benefit, to license or to abandon the patent applications or patents; 9.5.2 In addition, IURTC maybut is not required to, at its sole discretion, require payment of a retainer from Spotlight for filing fees prior to filing patent applications expense and in foreign countries, foreign annuities, or other direct costs paid on behalf of IURTC for the Patent Rights to any patent office; 9.5.3 Should Spotlight become delinquent at any time for the reimbursement of patenting costs, IURTC may, at its sole discretion, require Spotlight to pay in advance of all future actions undertaken by Prosecute such Agenus Patent Rights through counsel regarding the Patent Rights; and 9.5.4 In addition to and not in lieu of its choosing. In the event that Incyte undertakes such Prosecution, Agenus shall provide Incyte all reasonable assistance and cooperation in relation thereto, including as specified in Section 6.1(d) above and including providing any necessary powers of attorney and executing any other rights and remedies hereunder, IURTC will have no obligations to Spotlight under this Article 9 if Spotlight is delinquent in its paymentsrequired documents or instruments. 9.6 (d) If Spotlight Incyte elects not to incur fees Prosecute any Incyte Program Patent Rights or expenditures for Joint Patent Rights (whether worldwide or with respect to any particular country), including electing not to file a patent application with respect thereto or to allow any such Incyte Program Patent RightsRights or Joint Patent Rights to lapse or become abandoned or unenforceable, Spotlight will give IURTC written then Incyte shall promptly notify Agenus in writing (which such notice of such election shall be at least sixty (60) days prior to the lapse or abandonment of any such Joint Patent Rights). Thereafter, Agenus may, but is not required to, at its sole expense and in advance of the date on which its sole discretion, Prosecute such expenditure is to be made or such fee is due to be paid. Upon IURTC’s receipt of such notice, or if any payment due under this Article 9 is delinquent for more than thirty (30) days, the license granted to Spotlight for those patent applications or patents in the Incyte Program Patent Rights will terminate, the definition of or Joint Patent Rights will be unilaterally amended to exclude through counsel of its choosing. In the event that Agenus undertakes such rightsProsecution, Incyte shall provide Agenus all reasonable assistance and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rightscooperation in relation thereto, including without limitation, to continue prosecution as specified in Section 6.1(d) above and maintenance for IURTC’s sole use including providing any necessary powers of attorney and benefit, to license executing any other required documents or to abandon the patent applications or patentsinstruments. 9.7 Spotlight and IURTC agree that the Patent Rights will be extended by all means provided by U.S. or foreign law or regulation, including without limitation extensions provided under U.S. law at 35 U.S.C. §154(b) and 156, and foreign supplementary protection certificates. Spotlight hereby agrees to provide IURTC with all necessary assistance in securing such extension, including without limitation, providing all information regarding applications for regulatory approval, approvals granted, and the timing of same. Spotlight acknowledges that extension under 35 U.S.C. §156 must be applied for within sixty (60) days of the date that a Licensed Product receives permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, and that Spotlight’s failure to promptly provide the necessary information or assistance to IURTC during such sixty day period will cause serious injury to IURTC, for which Spotlight will be liable at law. The Parties will also cooperate in selecting the Licensed Product each supplementary protection certificate referencing the Patent Rights will list.

Prosecution of Patent Rights. 9.1 IURTC will prepare, file, prosecute, defend, and maintain the Patent Rights in its at the discretion of Licensee and in accordance with the terms and conditions herein using attorneys of its choosingIU’s choosing that are reasonably acceptable to Licensee. IURTC will instruct its attorneys (a) to keep Spotlight informed obtain final decisions from Licensee regarding the preparation, filing, prosecution, defense, and maintenance of patent prosecution in the Field Patent Rights and (b) to seek SpotlightIURTC’s comments and suggestions suggestions, which Licensee will consider, prior to taking material actions for the same (provided Spotlight is not in breach of this Agreement)same. 9.2 IURTC will authorize Spotlight Licensee to communicate directly with IURTC’s patent counsel, with copies of all such communications provided to IURTC. All information exchanged among IURTC’s counsel, the Parties, and/or the Inventors regarding the preparation, filing, prosecution, issue, defense, or maintenance of the Patent Rights will be deemed Confidential Information of IURTCInformation. In addition, the Parties acknowledge and agree that, with regard to such preparation, filing, prosecution, issue, defense, and maintenance of the Patent Rights, the interests of the Parties as licensor and licensee are to obtain the strongest and broadest patent protection possible, and as such, are aligned and legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Patent Rights, including without limitation, limitation privilege under the common interest doctrine and similar or related doctrines. 9.3 Spotlight will reimburse IURTC [***] within thirty (30) days after the Effective Date for expenses incurred prior to the Effective Date for the Patent Rights. 9.4 During the Term, Spotlight Licensee will reimburse IURTC for all reasonable and documented costs and expenses incurred by IURTC prior to the Effective Date relating to the preparation, filing, prosecution, defense, and maintenance of the Patent Rights within thirty (30) days [***] after the Effective Date. As of the Effective Date, IURTC has incurred approximately [***] for such patent-related costs and expenses. 9.4 Licensee will reimburse IURTC for all documented costs and expenses properly incurred by IURTC in accordance with this Article 9 during the Term relating to the preparation, filing, prosecution, defense, and maintenance of the Patent Rights within [***] of receipt of billing invoices for such costs and expenses. 9.5 Notwithstanding anything to the contrary herein: 9.5.1 IURTC may request written confirmation from Spotlight Licensee that it will satisfy its reimbursement obligations for any particular fees or expenditures for the Patent Rights at least sixty (60) days [***] in advance of the date on which such expenditure is to be made or such fee is due to be paid. If Spotlight Licensee elects not to pay in accordance with Paragraph 9.6 or fails to respond, then such Patent Rights will be removed from the Agreement, the license granted to Spotlight Licensee for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s its sole discretion and without any further obligation to Spotlight regarding Licensee, to prosecute, maintain, license, or abandon such former Patent Rights, including without limitation, to prosecute and maintain Rights for IURTC’s the sole use and benefit, to license or to abandon the patent applications or patentsbenefit of IURTC and at IURTC’s expense; 9.5.2 In addition, IURTC may, at its sole discretion, require payment of a reasonable retainer from Spotlight for filing fees Licensee prior to filing patent applications in foreign countries, foreign annuities, payment of any fees or other direct costs paid on behalf of IURTC for the Patent Rights to any patent office; 9.5.3 Should Spotlight Licensee become delinquent at any time for the reimbursement of patenting costs, IURTC may, at its sole discretion, require Spotlight Licensee to pay in advance of all future actions undertaken by counsel regarding the Patent Rights; and 9.5.4 In addition to and not in lieu of its other rights and remedies hereunder, IURTC will have no obligations to Spotlight Licensee under this Article 9 if Spotlight Licensee is delinquent in its payments. 9.6 If Spotlight Licensee elects not to incur fees or expenditures for any Patent Rights, Spotlight Licensee will give IURTC written notice of such election at least sixty (60) days [***] in advance of the date on which such expenditure is to be made or such fee is due to be paid. Upon IURTC’s receipt of such notice, or if any payment due under this Article 9 is delinquent for more than thirty (30) days[***], the license granted to Spotlight Licensee for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s its sole discretion and without any further obligation to Spotlight regarding Licensee, to prosecute, maintain, license, or abandon such former Patent Rights, including without limitation, to continue prosecution and maintenance Rights for IURTC’s the sole use and benefit, to license or to abandon the patent applications or patentsbenefit of IURTC and at IURTC’s expense. 9.7 Spotlight and IURTC The Parties agree that the Patent Rights will be extended by all means provided by U.S. or foreign law or regulation, including without limitation extensions provided under U.S. law at 35 U.S.C. §§ 154(b) and 156, 156 and foreign supplementary protection certificates. Spotlight Licensee hereby agrees to provide IURTC with all necessary assistance in securing such extension, including without limitation, limitation providing all information regarding applications for regulatory approval, approvals granted, and the timing of same. Spotlight Licensee acknowledges that extension under 35 U.S.C. §§ 156 must be applied for within sixty (60) days [***] of the date that a Licensed Product receives permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, and that SpotlightLicensee’s failure to promptly provide the necessary information or assistance to IURTC during such sixty day [***] period will cause serious injury to IURTC, for which Spotlight Licensee will be liable at law. The Parties will also cooperate in selecting the Licensed Product each supplementary protection certificate referencing the Patent Rights will list.

Prosecution of Patent Rights. 9.1 IURTC Certain information has been excluded from this agreement (indicated by “[***]”) because such information (i) is not material and (ii) would be competitively harmful if publicly disclosed. (a) [***]. The [***] will preparebe responsible for filing for, file, prosecute, defend, prosecution and maintain maintenance of the Patent Rights in its discretion [***] in accordance with the terms and conditions herein using attorneys of its choosingthe [***]. IURTC Clearside will instruct its attorneys provide Arctic Vision with all information that is provided to keep Spotlight informed of patent prosecution Clearside by the [***] with respect to the [***] in the Field Territory with sufficient time for Arctic Vision to review and comment thereon. If Clearside and [***] elect not to continue to seek Spotlight’s comments or maintain any [***] in the Territory, then: (a) to the extent Arctic Vision is the sole exclusive sublicensee of such [***], Clearside will provide Arctic Vision with timely notice and suggestions prior will provide Arctic Vision with a reasonable opportunity to taking material actions assume responsibility for the same continued prosecution and maintenance of such [***], or (provided Spotlight b) to the extent Arctic Vision is not the sole exclusive sublicensee of such [***], Clearside will provide Arctic Vision with timely notice and Arctic Vision and the other exclusive licensees will negotiate in breach good faith regarding the assumption of this Agreement)responsibility for the continued prosecution and maintenance of such [***]. 9.2 IURTC (b) For any Clearside Patent Rights not covered by Section 9.02(a), this Section 9.02(b) will authorize Spotlight apply. Clearside has the first right, at its discretion and using counsel it selects, to communicate directly prepare, file, prosecute and maintain all Clearside Patent Rights covering a Licensed Product in Clearside’s name in the Territory. Clearside will: (i) instruct such patent counsel to provide Arctic Vision with IURTC’s copies of all filings and formal correspondences relating to such Clearside Patent Rights in the Territory and (ii) keep Arctic Vision advised of the status of actual and prospective patent counselfilings related to a License Product in the Territory. All information exchanged among IURTC’s counselClearside will give Arctic Vision the opportunity to provide and will reasonably consider comments on the preparation, filing, prosecution and maintenance of the Parties, and/or Clearside Patent Rights covering a Licensed Product in the Inventors Territory. Each Party will treat any consultation regarding the preparation, filing, prosecution, issue, defense, or maintenance of the Patent Rights will be deemed Confidential Information of IURTC. In addition, the Parties acknowledge and agree that, with regard to such preparation, filing, prosecution, issue, defense, prosecution and maintenance of the such Clearside Patent Rights, along with any information disclosed by each Party in connection therewith (including any information concerning patent expenses), as Confidential Information. If Clearside elects not to continue to seek or maintain any Clearside Patent Rights covering a Licensed Product in the interests Territory, then: (A) to the extent Arctic Vision is the sole exclusive licensee of the Parties as licensor and licensee are to obtain the strongest and broadest patent protection possible, and as such, are aligned and legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the such Clearside Patent Rights, including without limitationClearside will provide Arctic Vision with timely notice and will provide Arctic Vision with a reasonable opportunity to assume responsibility for the continued prosecution and maintenance of such Clearside Patent Rights, privilege under the common interest doctrine and similar or related doctrines. 9.3 Spotlight will reimburse IURTC [***] within thirty (30B) days after the Effective Date for expenses incurred prior to the Effective Date extent Arctic Vision is not the sole exclusive licensee of such Clearside Patent Rights, Clearside will provide Arctic Vision with timely notice and Arctic Vision and the other exclusive licensees will negotiate in good faith regarding the assumption of responsibility for the continued prosecution and maintenance of such Clearside Patent Rights. 9.4 During the Term(c) In preparing, Spotlight will reimburse IURTC for all reasonable filing, prosecuting and documented costs and expenses incurred by IURTC relating maintaining any Patent Right, in no event shall either Party take any position that is contrary to or detrimental to the scope or enforceability of any Patent Rights within thirty (30) days of receipt of billing invoices for such costs and expenses. 9.5 Notwithstanding anything belonging to the contrary herein: 9.5.1 IURTC may request written confirmation from Spotlight that it will satisfy its reimbursement obligations for any particular fees or expenditures for other Party within the Patent Rights at least sixty (60) days in advance scope of the date on which such expenditure is to be made or such fee is due to be paid. If Spotlight elects not to pay in accordance with Paragraph 9.6 or fails to respond, then such Patent Rights will be removed from the this Agreement, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to prosecute and maintain for IURTC’s sole use and benefit, to license or to abandon the patent applications or patents; 9.5.2 In addition, IURTC may, at its sole discretion, require payment of a retainer from Spotlight for filing fees prior to filing patent applications in foreign countries, foreign annuities, or other direct costs paid on behalf of IURTC for the Patent Rights to any patent office; 9.5.3 Should Spotlight become delinquent at any time for the reimbursement of patenting costs, IURTC may, at its sole discretion, require Spotlight to pay in advance of all future actions undertaken by counsel regarding the Patent Rights; and 9.5.4 In addition to and not in lieu of its other rights and remedies hereunder, IURTC will have no obligations to Spotlight under this Article 9 if Spotlight is delinquent in its payments. 9.6 If Spotlight elects not to incur fees or expenditures for any Patent Rights, Spotlight will give IURTC written notice of such election at least sixty (60) days in advance of the date on which such expenditure is to be made or such fee is due to be paid. Upon IURTC’s receipt of such notice, or if any payment due under this Article 9 is delinquent for more than thirty (30) days, the license granted to Spotlight for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s sole discretion and without any further obligation to Spotlight regarding such former Patent Rights, including without limitation, to continue prosecution and maintenance for IURTC’s sole use and benefit, to license or to abandon the patent applications or patents. 9.7 Spotlight and IURTC agree that the Patent Rights will be extended by all means provided by U.S. or foreign law or regulation, including without limitation extensions provided under U.S. law at 35 U.S.C. §154(b) and 156, and foreign supplementary protection certificates. Spotlight hereby agrees to provide IURTC with all necessary assistance in securing such extension, including without limitation, providing all information regarding applications for regulatory approval, approvals granted, and the timing of same. Spotlight acknowledges that extension under 35 U.S.C. §156 must be applied for within sixty (60) days of the date that a Licensed Product receives permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, and that Spotlight’s failure to promptly provide the necessary information or assistance to IURTC during such sixty day period will cause serious injury to IURTC, for which Spotlight will be liable at law. The Parties will also cooperate in selecting the Licensed Product each supplementary protection certificate referencing the Patent Rights will list.

Prosecution of Patent Rights. 9.1 IURTC will prepare, file, prosecute, defend, and maintain the Patent Rights in its at the discretion of Licensee and in accordance with the terms and conditions herein using attorneys of its choosingIU’s choosing that are reasonably acceptable to Licensee. IURTC will instruct its attorneys (a) to keep Spotlight informed obtain final decisions from Licensee regarding the preparation, filing, prosecution, defense, and maintenance of patent prosecution in the Field Patent Rights and (b) to seek SpotlightIURTC’s comments and suggestions suggestions, which Licensee will consider, prior to taking material actions for the same (provided Spotlight is not in breach of this Agreement)same. 9.2 IURTC will authorize Spotlight Licensee to communicate directly with IURTC’s patent counsel, with copies of all such communications provided to IURTC. All information exchanged among IURTC’s counsel, the Parties, and/or the Inventors regarding the preparation, filing, prosecution, issue, defense, or maintenance of the Patent Rights will be deemed Confidential Information of IURTCInformation. In addition, the Parties acknowledge and agree that, with regard to such preparation, filing, prosecution, issue, defense, and maintenance of the Patent Rights, the interests of the Parties as licensor and licensee are to obtain the strongest and broadest patent protection possible, and as such, are aligned and legal in nature. The Parties agree and acknowledge that they have not waived, and nothing in this Agreement constitutes a waiver of, any legal privilege concerning the Patent Rights, including without limitation, limitation privilege under the common interest doctrine and similar or related doctrines. 9.3 Spotlight will reimburse IURTC [***] within thirty (30) days after the Effective Date for expenses incurred prior to the Effective Date for the Patent Rights. 9.4 During the Term, Spotlight Licensee will reimburse IURTC for all reasonable and documented costs and expenses incurred by IURTC prior to the Effective Date relating to the preparation, filing, prosecution, defense, and maintenance of the Patent Rights within thirty (30) days [***] after the Effective Date. As of the Effective Date, IURTC has incurred approximately [***] for such patent-related costs and expenses. 9.4 Licensee will reimburse IURTC for all documented costs and expenses properly incurred by IURTC in accordance with this Article 9 during the Term relating to the preparation, filing, prosecution, defense, and maintenance of the Patent Rights within [***] of receipt of billing invoices for such costs and expenses. 9.5 Notwithstanding anything to the contrary herein: 9.5.1 IURTC may request written confirmation from Spotlight Licensee that it will satisfy its reimbursement obligations for any particular fees or expenditures for the Patent Rights at least sixty (60) days [***] in advance of the date on which such expenditure is to be made or such fee is due to be paid. If Spotlight Licensee elects not to pay in accordance with Paragraph 9.6 or fails to respond, then such Patent Rights will be removed from the Agreement, the license granted to Spotlight Licensee for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s its sole discretion and without any further obligation to Spotlight regarding Licensee, to prosecute, maintain, license, or abandon such former Patent Rights, including without limitation, to prosecute and maintain Rights for IURTC’s the sole use and benefit, to license or to abandon the patent applications or patentsbenefit of IURTC and at IURTC’s expense; 9.5.2 In addition, IURTC may, at its sole discretion, require payment of a reasonable retainer from Spotlight for filing fees Licensee prior to filing patent applications in foreign countries, foreign annuities, payment of any fees or other direct costs paid on behalf of IURTC for the Patent Rights to any patent office; 9.5.3 Should Spotlight Licensee become delinquent at any time for the reimbursement of patenting costs, IURTC may, at its sole discretion, require Spotlight Licensee to pay in advance of all future actions undertaken by counsel regarding the Patent Rights; and 9.5.4 In addition to and not in lieu of its other rights and remedies hereunder, IURTC will have no obligations to Spotlight Licensee under this Article 9 if Spotlight Licensee is delinquent in its payments. 9.6 If Spotlight Licensee elects not to incur fees or expenditures for any Patent Rights, Spotlight Licensee will give IURTC written notice of such election at least sixty (60) days [***] in advance of the date on which such expenditure is to be made or such fee is due to be paid. Upon IURTC’s receipt of such notice, or if any payment due under this Article 9 is delinquent for more than thirty (30) days[***], the license granted to Spotlight Licensee for those patent applications or patents in the Patent Rights will terminate, the definition of Patent Rights will be unilaterally amended to exclude such rights, and IURTC will be free, at IURTC’s its sole discretion and without any further obligation to Spotlight regarding Licensee, to prosecute, maintain, license, or abandon such former Patent Rights, including without limitation, to continue prosecution and maintenance Rights for IURTC’s the sole use and benefit, to license or to abandon the patent applications or patentsbenefit of IURTC and at IURTC’s expense. 9.7 Spotlight and IURTC The Parties agree that the Patent Rights will be extended by all means provided by U.S. or foreign law or regulation, including without limitation extensions provided under U.S. law at 35 U.S.C. §§ 154(b) and 156, 156 and foreign supplementary protection certificates. Spotlight Licensee hereby agrees to provide IURTC with all necessary assistance in securing such extension, including without limitation, limitation providing all information regarding applications for regulatory approval, approvals granted, and the timing of same. Spotlight Licensee acknowledges that extension under 35 U.S.C. §§ 156 must be applied for within sixty (60) days of the date that a Licensed Product receives permission under the provision of law under which the applicable regulatory review period occurred for commercial marketing or use, and that SpotlightLicensee’s failure to promptly provide the necessary information or assistance to IURTC during such sixty day period will cause serious injury to IURTC, for which Spotlight Licensee will be liable at law. The Parties will also cooperate in selecting the Licensed Product each supplementary protection certificate referencing the Patent Rights will list.