Common use of Prosecution of Patents Clause in Contracts

Prosecution of Patents. 7.1.1 Wistar shall have the exclusive responsibility and control over the Prosecution of the Licensed Patents. Company shall reimburse Wistar for Patenting Costs incurred by Wistar prior to the Effective Date (“Past Patenting Costs”) within [**] ([**]) days of the Effective Date. With respect to any Patenting Costs incurred by or on behalf of Wistar after the Effective Date, Company shall remit payment of such Patenting Costs within [**] ([**]) days after Company receives invoices for same. Notwithstanding the foregoing, at least [**] ([**])) days before a particular action is required for the protection of certain rights comprising the Licensed Patents (the “Bar Date”), Wistar shall have the right to request advance payment of reasonable estimated Patenting Costs for such action if such estimated Patenting Costs are at least [**] dollars ($[**]), and Company shall be obligated to pay the amount of such estimated Patenting Costs no less than [**] ([**]) days before the Bar Date. So long as Wistar’s request is timely made, Wistar shall have no obligation to take or have taken such action, and no liability for failing to take such action, to protect the Licensed Patents at issue, unless the estimated Patenting Costs are timely paid by Company, even if the result is the irrevocable loss of rights. 7.1.2 Company and Wistar shall mutually determine the jurisdictions, other than the United States, where the Licensed Patents shall be Prosecuted. If Company declines to pay for Patenting Costs in any jurisdiction, Wistar may do so at its cost and expense but such patents and the subject matter of any application relating thereto shall be excluded from the definition of Licensed Patents. 7.1.3 If Wistar elects not to Prosecute any patent or patent application included in the Licensed Patents, it shall notify Company at least [**] ([**]) days prior to taking, or not taking, any action which would result in abandonment, withdrawal, or lapse of such patent or patent application. Company shall then have the right to Prosecute such patent or patent application at its own cost and expense in Wistar’s name. 7.1.4 Each party shall cooperate with the other party to execute all lawful papers and instruments and to make all rightful oaths and declarations as may be necessary in the Prosecution of all such patents and other applications and protections referred to in this Article 7. 7.1.5 All non-public information exchanged between the parties or between Wistar’s patent counsel and Company regarding Prosecution and enforcement of the Licensed Patents, and all shared information regarding analyses or opinions of third party intellectual property, shall be deemed Confidential Information. In addition, the parties acknowledge and agree that, with regard to Prosecution and enforcement of the Licensed Patents, the interests of the parties as licensor and licensee are to obtain the strongest patent prosecution possible, and as such, are aligned and are 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 Licensed Patents or the Confidential Information, including privilege under the common interest doctrine and similar or related doctrines. Wistar Reference No. LIC15-35 Wistar/OncoCyte Certain information has been omitted under a request for confidential treatment, and the omitted information has been filed with the Commission. Confidential portions are marked [**].

Prosecution of Patents. 7.1.1 (i) Wistar shall have be responsible for and shall control the exclusive responsibility preparation, prosecution and control over maintenance of all patents and patent applications related to an Invention (the Prosecution of "Patent(s)"), except for any patent or patent application that Sponsor has elected to file, prosecute or maintain under the Licensed Patentste1ms specified in Section 6.1(v) hereof. (ii) If Sponsor has elected to obtain an Option to License an Invention by notice to Wistar as provided in Section 5.2(i) hereof, the parties agree to mutually determine whether to file a patent application(s) on the Invention and the countries in which such applications will be prosecuted and maintained . Company Sponsor shall reimburse Wistar for Patenting Costs all documented expenses (including legal fees, filing and maintenance fees or other governmental charges) incurred by Wistar prior to in connection with the Effective Date (“Past Patenting Costs”) within [**] ([**]) days filing, prosecution and maintenance of the Effective DatePatents claiming such Invention (the "Patent Expenses"). Sponsor's obligation to pay the Patent Expenses will terminate at the expiration of the Option to License with respect to all Inventions included within the Option to License that Sponsor declines to negotiate a license for, as provided in Section 5.3(ii). With respect to the Inventions for which Sponsor elects to negotiate a license under the terms of Section 5.3, such obligations shall continue unless the negotiation period provided in Section 5.3(i) expires without Wistar and Sponsor entering into the desired license agreement, in which case Sponsor's obligation to pay for any Patenting Costs Patent Expenses incurred by or on behalf of Wistar after the Effective Date, Company such date shall remit payment of such Patenting Costs within [**] immediately terminate. ([**]iii) days after Company receives invoices for same. Notwithstanding the foregoing, at least [**] ([**])) days before a particular action is required for the protection of certain rights comprising the Licensed Patents (the “Bar Date”), Wistar shall have retain all right, title and interest in and to the right Inventions and any Patents, copyrights and other protections related thereto, regardless of which party prepares, prosecutes or maintains the Patents, copyrights or other protections related to request advance payment of reasonable estimated Patenting Costs for such action if such estimated Patenting Costs are at least [**] dollars ($[**])the Inventions, and Company shall be obligated subject to pay the amount of such estimated Patenting Costs no less than [**] ([**]) days before the Bar Date. So long as Wistar’s request is timely made, Wistar shall have no obligation any express license granted to take or have taken such action, and no liability for failing to take such action, to protect the Licensed Patents at issue, unless the estimated Patenting Costs are timely paid by Company, even if the result is the irrevocable loss of rightsSponsor under Section 5.3 hereof. 7.1.2 Company and Wistar shall mutually determine the jurisdictions, other than the United States, where the Licensed Patents shall be Prosecuted. (iv) If Company Sponsor declines to pay for Patenting Costs the Patent Expenses in any jurisdictionjurisdiction for any Patents subject to an Option to License, Wistar may do so at its cost costs and expense but such patents and the subject matter of any application relating thereto Patents shall then be excluded from the definition of Licensed PatentsSponsor's Option to License. 7.1.3 (v) If Wistar elects not to Prosecute file, prosecute or maintain any patent or patent application Patent included in the Licensed PatentsOption to License and as to which Sponsor has requested Wistar to file one or more patent applications, it Wistar shall notify Company Sponsor at least [**] sixty ([**]60) days prior to taking, or not taking, any action which would result in the abandonment, withdrawal, or lapse of such patent or patent applicationapplication or patent rights associated with an Invention. Company Sponsor shall then have the right to Prosecute such patent file, prosecute or patent application maintain the Patent at its own cost and expense in Wistar’s nameexpense. 7.1.4 (vi) The filing and prosecution of copyright, trademark and other intellectual property protections related to the Inventions shall be subject to the provisions of this Section. Wistar/OncoCyte Sponsored Research Agreement (vii) Each party shall cooperate with the other party to execute all lawful papers and instruments and to make all rightful oaths and declarations as may be necessary in the Prosecution preparation and prosecution of all such patents Patents and other applications and protections referred to in this Article 7filings. 7.1.5 All non-public information exchanged between the parties or between Wistar’s patent counsel and Company regarding Prosecution and enforcement of the Licensed Patents, and all shared information regarding analyses or opinions of third party intellectual property, shall be deemed Confidential Information. In addition, the parties acknowledge and agree that, with regard to Prosecution and enforcement of the Licensed Patents, the interests of the parties as licensor and licensee are to obtain the strongest patent prosecution possible, and as such, are aligned and are 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 Licensed Patents or the Confidential Information, including privilege under the common interest doctrine and similar or related doctrines. Wistar Reference No. LIC15-35 Wistar/OncoCyte Certain information has been omitted under a request for confidential treatment, and the omitted information has been filed with the Commission. Confidential portions are marked [**].

Prosecution of Patents. 7.1.1 Wistar Licensed [***] Patents, Licensed Product Improvement Patents, and Joint Patents relating to Licensed Products. Except as otherwise provided in this Section 12.3(a), as between the Parties, Takeda shall have the exclusive responsibility sole right and control over authority to prepare, file, prosecute and maintain the Prosecution Licensed [***] Patent, Licensed Product Improvement Patents, and, where relating to Licensed Products, Joint Patents (collectively, the “[***] Patent Prosecution”) on a worldwide basis (including the right to defend in patent office proceedings such as inter partes reviews, post grant reviews and oppositions).Takeda shall bear all costs of preparation, filing, prosecution and maintenance of the [***] Patent Prosecution in the Territory. Provided that Ultragenyx’s rights with respect to the applicable Licensed PatentsProduct have not terminated, Takeda, upon Ultragenyx’s request, shall provide Ultragenyx a reasonable opportunity to review and comment on material communications from any patent authority in the Territory regarding the [***] Patent Prosecution and drafts of any material filings or responses to be made to such patent authorities in advance of submitting such filings or responses. Company Takeda shall reimburse Wistar for Patenting Costs incurred consider Ultragenyx’s comments regarding such communications and drafts in good faith with a view to maximizing the Patent protection and scope in the Territory in the Ultragenyx Field. If Ultragenyx’s rights with respect to the applicable Licensed Product have not terminated and Takeda determines in its sole discretion to abandon or not maintain any Licensed [***] Patent, Licensed Product Improvement Patent, or, where relating to Licensed Products, Joint Patent that is being prosecuted or maintained by Wistar Takeda in the Territory and that is applicable to the in the Ultragenyx Field, then Takeda shall provide Ultragenyx with written notice of such determination within a period of time reasonably necessary to allow Ultragenyx to determine, in its sole discretion, its interest in such Patent(s) (which notice by Takeda shall be given no later than sixty (60) days prior to the Effective Date (“Past Patenting Costs”) within [**] ([**]) days of the Effective Date. With final deadline for any pending action or response that may be due with respect to any Patenting Costs incurred by or on behalf of Wistar after such Patent(s) with the Effective Date, Company shall remit payment of applicable patent authority). If Ultragenyx provides timely written notice expressing its interest in continuing to support such Patenting Costs within [**] ([**]) days after Company receives invoices for same. Notwithstanding the foregoing, at least [**] ([**])) days before a particular action is required for the protection of certain rights comprising the Licensed Patents (the “Bar Date”Patent(s), Wistar Ultragenyx shall have the right to request advance payment pursue the filing or support the continued prosecution or maintenance of reasonable estimated Patenting Costs for such Patents and Takeda shall provide to Ultragenyx, subject to reimbursement of Takeda’s out-of-pocket costs, all unpublished patent applications and any other information and documents necessary to permit Ultragenyx to take such action if to establish or preserve any such estimated Patenting Costs are at least Patents. If Ultragenyx pursues the filing or support of such Patents and Takeda continues to pursue a Licensed [**] dollars ($[**]), and Company shall be obligated to pay the amount of such estimated Patenting Costs no less than [**] ([**]) days before the Bar Date. So long as Wistar’s request is timely made, Wistar shall have no obligation to take or have taken such action, and no liability for failing to take such action, to protect the Licensed Patents at issue, unless the estimated Patenting Costs are timely paid by Company, even if the result is the irrevocable loss of rights. 7.1.2 Company and Wistar shall mutually determine the jurisdictions, other than the United States, where the Licensed Patents shall be Prosecuted. If Company declines to pay for Patenting Costs in any jurisdiction, Wistar may do so at its cost and expense but such patents and the subject matter of any application relating thereto shall be excluded from the definition of Licensed Patents. 7.1.3 If Wistar elects not to Prosecute any patent or patent application included Product in the Licensed PatentsTakeda Field, it shall notify Company at least [**] ([**]) days prior provide Takeda a reasonable opportunity to taking, review and comment on material communications from any patent authority in the Territory regarding such Patents and drafts of any material filings or not taking, any action which would result in abandonment, withdrawal, or lapse of responses to be made to such patent authorities in advance of submitting such filings or patent applicationresponses. Company Ultragenyx shall then have the right to Prosecute consider Takeda’s comments regarding such patent or patent application at its own cost communications and expense drafts in Wistar’s namegood faith. 7.1.4 Each party shall cooperate with the other party to execute all lawful papers and instruments and to make all rightful oaths and declarations as may be necessary in the Prosecution of all such patents and other applications and protections referred to in this Article 7. 7.1.5 All non-public information exchanged between the parties or between Wistar’s patent counsel and Company regarding Prosecution and enforcement of the Licensed Patents, and all shared information regarding analyses or opinions of third party intellectual property, shall be deemed Confidential Information. In addition, the parties acknowledge and agree that, with regard to Prosecution and enforcement of the Licensed Patents, the interests of the parties as licensor and licensee are to obtain the strongest patent prosecution possible, and as such, are aligned and are 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 Licensed Patents or the Confidential Information, including privilege under the common interest doctrine and similar or related doctrines. Wistar Reference No. LIC15-35 Wistar/OncoCyte Certain information has been omitted under a request for confidential treatment, and the omitted information has been filed with the Commission. Confidential portions are marked [**].

Prosecution of Patents. 7.1.1 Wistar shall have 4.2.1 As between the exclusive responsibility Parties, OPI will be responsible for preparation, filing, prosecution, maintenance, and control over seeking extensions of all Licensed Patents and OPI Improvement Patents at OPI’s cost and expense. OPI will provide the Prosecution owner of the Licensed Patents. Company shall reimburse Wistar for Patenting Costs incurred by Wistar prior Patent with a reasonable opportunity to comment on the Effective Date (“Past Patenting Costs”) within [**] ([**]) days of the Effective Date. With respect to any Patenting Costs incurred by or on behalf of Wistar after the Effective Datepreparation, Company shall remit payment of such Patenting Costs within [**] ([**]) days after Company receives invoices for same. Notwithstanding the foregoingfiling, at least [**] ([**])) days before a particular action is required for the protection of certain rights comprising the Licensed Patents (the “Bar Date”), Wistar shall have the right to request advance payment of reasonable estimated Patenting Costs for such action if such estimated Patenting Costs are at least [**] dollars ($[**]), prosecution and Company shall be obligated to pay the amount of such estimated Patenting Costs no less than [**] ([**]) days before the Bar Date. So long as Wistar’s request is timely made, Wistar shall have no obligation to take or have taken such action, and no liability for failing to take such action, to protect the Licensed Patents at issue, unless the estimated Patenting Costs are timely paid by Company, even if the result is the irrevocable loss of rights. 7.1.2 Company and Wistar shall mutually determine the jurisdictions, other than the United States, where the Licensed Patents shall be Prosecuted. If Company declines to pay for Patenting Costs in any jurisdiction, Wistar may do so at its cost and expense but such patents and the subject matter of any application relating thereto shall be excluded from the definition of Licensed Patents. 7.1.3 If Wistar elects not to Prosecute any patent or patent application included in the Licensed Patents, it shall notify Company at least [**] ([**]) days prior to taking, or not taking, any action which would result in abandonment, withdrawal, or lapse of such patent or patent application. Company shall then have the right to Prosecute such patent or patent application at its own cost and expense in Wistar’s name. 7.1.4 Each party shall cooperate with the other party to execute all lawful papers and instruments and to make all rightful oaths and declarations as may be necessary in the Prosecution of all such patents and other applications and protections referred to in this Article 7. 7.1.5 All non-public information exchanged between the parties or between Wistar’s patent counsel and Company regarding Prosecution and enforcement maintenance of the Licensed Patents, and OPI will consider all shared information regarding analyses comments received from such Licensor in a timely manner in good faith. OPI will not purposefully narrow the claims of any pending Licensed Patent simply to avoid paying royalties hereunder. OPI will not, without the owner’s prior written consent, which may not be unreasonably withheld, conditioned or opinions delayed, voluntarily narrow the claims of third party intellectual property, shall be deemed Confidential Information. In addition, the parties acknowledge and agree that, with regard to Prosecution and enforcement of the any Licensed Patents, the interests of the parties as licensor and licensee are to obtain the strongest patent prosecution possible, and as such, are aligned and are legal in nature. The parties agree and acknowledge that Patents after they have not waivedbeen allowed or issued. 4.2.2 If OPI intends to abandon any issued Licensed Patent, OPI shall notify SDRI of such intent at least 30 days in advance of any deadline that would prejudice SDRI’s rights under this Agreement. SDRI then will have the opportunity to pay any issue, maintenance, or annuity fee due to maintain said Licensed Patent in its discretion and nothing in this Agreement constitutes a waiver of, at the Licensor’s cost and expense. 4.2.3 If OPI intends to abandon or otherwise cease prosecution of any legal privilege concerning pending application within the Licensed Patents without intent to file any continuing or divisional patent application, OPI shall notify SDRI before expiration of one-half of the Confidential Informationstatutory time permitted to respond to the subject office action issued by the applicable Government Authority for the application. SDRI then will have the opportunity to continue prosecution of the pending application in its discretion, but not to the detriment of any Licensed Patent(s), and at its sole cost and expense. If SDRI notifies OPI of SDRI’s desire to continue prosecution, then OPI will: (a) promptly send all applicable prosecution file contents (including paper copies and electronic files thereof) to the Licensor and (b) in good faith cooperate with SDRI to assist SDRI in executing any and all reasonable documents necessary for SDRI to continue prosecution of the pending application. 4.2.4 Each Licensor will execute all further instruments to provide OPI with the ability to control prosecution and maintenance activities consistent with this Section as reasonably requested by OPI from time to time, including privilege under the common interest doctrine and similar or related doctrines. Wistar Reference No. LIC15-35 Wistar/OncoCyte Certain information has been omitted under a request for confidential treatmentby promptly executing powers of attorney, and will cause each of its Representative(s) to do the omitted information has been filed with the Commission. Confidential portions are marked [**]same.

Prosecution of Patents. 7.1.1 7.1.1. Subject to Section 7.1 and its subsections, Wistar shall have the exclusive responsibility and control over the Prosecution of the Licensed Patents. Upon execution of this Agreement, Company shall reimburse Wistar for Patenting Costs incurred by Wistar prior to the Effective Date and not previously reimbursed by ITUS or Company under the Option (“Past Patenting Costs”) within [**] ([**]) days of the Effective Date). With respect to any Patenting Costs incurred by or on behalf of Wistar after the Effective Date, Company shall remit payment of such Patenting Costs within [**] thirty ([**]30) days after Company receives invoices for same. Notwithstanding the foregoing, at least [**] sixty ([**])60) days before a particular action is required for the protection of certain rights comprising the Licensed Patents (the “Bar Date”), Wistar shall have the right to request advance payment of reasonable estimated Patenting Costs for such action if such estimated Patenting Costs are at least [**] twenty thousand U.S. dollars ($[**]20,000 USD), and Company shall be obligated to pay the amount of such estimated Patenting Costs no less than [**] thirty ([**]30) days before the Bar Date. So long as Wistar’s request is timely made, Wistar shall have no obligation to take or have taken such action, and no liability for failing to take such action, to protect the Licensed Patents at issue, unless the estimated Patenting Costs are timely paid by Company, even if the result is the irrevocable loss of rights. 7.1.2 7.1.2. For each patent application and patent under the Licensed Patents, Wistar shall: prepare, file, and prosecute such patent application: maintain such patent; pay all fees and expenses associated with its activities pursuant to Section 7.1; keep Company currently informed of the filing and progress of all material aspects of the prosecution of such patent application and the issuance of patents from any such patent application; consult with Company concerning any decisions which could affect the scope or enforcement of any issued claims or the potential abandonment of such patent application or patent; and notify Company in writing of any additions, deletions, or changes in the status of such patent or patent application. 7.1.3. Company and Wistar shall mutually determine the jurisdictions, other than the United States, where the Licensed Patents shall be Prosecuted. If Company declines to pay for Patenting Costs in any jurisdiction, Wistar may do so at its cost and expense but such patents and the subject matter of any application relating thereto shall be excluded from the definition of Licensed Patents. 7.1.3 7.1.4. If Wistar elects not to Prosecute any patent or patent application included in the Licensed Patents, it shall notify Company at least [**] sixty ([**]60) days prior to taking, or not taking, any action which would result in abandonment, withdrawal, or lapse of such patent or patent application. Such patent application or patent shall no longer be a Licensed Patent and Company shall not have any further royalty or other payment obligation for such patent application or patent. Company shall then have the right to Prosecute such patent or patent application at its own cost and expense in Wistar’s name. 7.1.4 Each party shall cooperate with the other party to execute all lawful papers and instruments and to make all rightful oaths and declarations as may be necessary in the Prosecution of all such patents and other applications and protections referred to in this Article 7. 7.1.5 All non-public information exchanged between the parties or between Wistar’s patent counsel and Company regarding Prosecution and enforcement of the Licensed Patents, and all shared information regarding analyses or opinions of third party intellectual property, shall be deemed Confidential Information. In addition, the parties acknowledge and agree that, with regard to Prosecution and enforcement of the Licensed Patents, the interests of the parties as licensor and licensee are to obtain the strongest patent prosecution possible, and as such, are aligned and are 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 Licensed Patents or the Confidential Information, including privilege under the common interest doctrine and similar or related doctrines. Wistar Reference No. LIC15-35 Wistar/OncoCyte Certain information has been omitted under a request for confidential treatment, and the omitted information has been filed with the Commission. Confidential portions are marked [**].