Common use of Prosecution of Patents Clause in Contracts

Prosecution of Patents. LICENSOR has taken and shall use it best efforts to undertake all actions necessary for prosecution and maintenance of the Licensed Patents, including prosecution of all patent applications, payment of maintenance, annuity, and renewal fees as required by the respective national, international or regional patent offices that issued the patents, and payment of all attorney fees and costs for prosecution, maintenance, and grant of any pending patent applications. LICENSEE may suggest specific countries in which it believes patent protection may be of value in view of its marketing strategy for the Licensed Products, however, selection of countries and/or regions for future international and national stage patent filings of Licensed Patents shall be within the sole discretion of LICENSOR. However, if LICENSEE wishes to pursue patent protection in a country or region in which LICENSOR has elected not to file, LICENSEE may request that LICENSOR pursue such patent protection at LICENSEE’s expense, which shall include all prosecution costs and maintenance fees. LICENSOR shall further have sole discretion in determining whether a particular patent or patent application has ceased to be of sufficient business value to warrant incurring additional prosecution and maintenance fees and costs, but shall notify LICENSEE of LICENSOR’s intention to allow the particular patent or patent application to lapse at least thirty days (30) prior to irretrievable abandonment so that LICENSEE may request that the patent or patent application be kept in force at LICENSEE’s expense. Any costs associated with patent prosecution and/or maintenance requested by LICENSEE after LICENSOR has given notice of its intent to forego patent rights or allow the patent or patent application to lapse will be borne by the LICENSEE. Notwithstanding anything in this Agreement to the contrary, as to any Licensed Patent which LICENSOR elects not to pursue, file, continue prosecuting or maintain in the United States, but which LICENSEE chooses have LICENSOR pursue, file, continue prosecuting or maintain and for which LICENSEE pays the preparation and/or prosecution costs and/or maintenance fees, LICENSEE shall have the authority to control the preparation and/or prosecution and/or maintenance thereof, and LICENSOR shall assign all rights, title and interest in and to any such Licensed Patents to LICENSEE, provided however, to the extent that any prosecution is controlled by LICENSEE, any arguments or positions taken during such prosecution may not impair the scope or construction of any Licensed Patent to which LICENSOR has retained the rights.

Prosecution of Patents. LICENSOR has taken and (a) CVD shall use it best efforts to undertake all actions necessary for have control of the preparation, prosecution and maintenance of CVD Patents. The cost of such preparation, prosecution and maintenance of CVD Patents shall be paid by CVD. If CVD determines that it does not wish to continue the Licensed cost of preparation, prosecution or maintenance of such CVD Patents in any individual case, it shall notify Guidant at least ninety (90) days prior to taking, or not taking, any action which would result in the abandonment, withdrawal, or lapse of any CVD Patent. In such circumstance, Guidant shall have the right to control the preparation, prosecution or maintenance thereof, as the case may be, at its own expense, but any such change in control shall not affect the ownership thereof or the license to CVD Patents hereunder. (b) The provisions of Subsection 10(a) above will also apply to Foreign Counterparts. The parties shall consult about the countries, if any, where additional Foreign Counterparts will be filed, prosecuted and maintained. The parties shall keep each other reasonably informed of the status of all CVD Patents thereof for which they have responsibility as defined hereunder. If CVD determines that it does not wish to prepare, prosecute or maintain certain Foreign Counterparts, it shall notify Guidant of such decision, and, in any event shall give Guidant at least ninety (90) days notice prior to taking, or not taking, any action which would result in the abandonment, withdrawal, or lapse of any Foreign Counterpart. In such circumstance, Guidant shall have the right to control the preparation, prosecution or maintenance thereof, as the case may be, at its own expense, but any such change in control shall not affect the ownership thereof or the license to CVD Patents, including prosecution of Foreign Counterparts, hereunder. (c) Each party shall cooperate with the other party, as reasonably requested, to execute all patent applications, payment of maintenance, annuity, lawful papers and renewal fees instruments and to make all rightful oaths and declarations as required by the respective national, international or regional patent offices that issued the patents, and payment of all attorney fees and costs for prosecution, maintenance, and grant of any pending patent applications. LICENSEE may suggest specific countries in which it believes patent protection may be of value necessary in view of its marketing strategy for the Licensed Productspreparation, however, selection of countries and/or regions for future international and national stage patent filings of Licensed Patents shall be within the sole discretion of LICENSOR. However, if LICENSEE wishes to pursue patent protection in a country or region in which LICENSOR has elected not to file, LICENSEE may request that LICENSOR pursue such patent protection at LICENSEE’s expense, which shall include all prosecution costs and maintenance fees. LICENSOR shall further have sole discretion in determining whether a particular patent or patent application has ceased to be of sufficient business value to warrant incurring additional prosecution and maintenance fees of any and costsall such patents and patent applications contained within CVD Patents. The party that is controlling such preparation, but prosecution and maintenance shall notify LICENSEE also pay the reasonable out-of-pocket costs of LICENSOR’s intention to allow the particular patent or patent application to lapse at least thirty days (30) prior to irretrievable abandonment so that LICENSEE may request that the patent or patent application be kept in force at LICENSEE’s expense. Any costs associated with patent prosecution and/or maintenance requested by LICENSEE after LICENSOR has given notice of its intent to forego patent rights or allow the patent or patent application to lapse will be borne such cooperation by the LICENSEE. Notwithstanding anything in this Agreement to the contrary, as to any Licensed Patent which LICENSOR elects not to pursue, file, continue prosecuting or maintain in the United States, but which LICENSEE chooses have LICENSOR pursue, file, continue prosecuting or maintain and for which LICENSEE pays the preparation and/or prosecution costs and/or maintenance fees, LICENSEE shall have the authority to control the preparation and/or prosecution and/or maintenance thereof, and LICENSOR shall assign all rights, title and interest in and to any such Licensed Patents to LICENSEE, provided however, to the extent that any prosecution is controlled by LICENSEE, any arguments or positions taken during such prosecution may not impair the scope or construction of any Licensed Patent to which LICENSOR has retained the rightsother party.

Prosecution of Patents. LICENSOR has taken (a) Subject to Section 9.3(b), as between the Parties, and shall use after the Option exercise for a given Development Candidate, Licensee may prepare, file, prosecute and maintain patents in any and all jurisdictions worldwide covering Licensee Inventions, Licensor Inventions and Joint Inventions solely for patents which include claims directed specifically to any Collaboration Development Candidates and do not include any claims covering any SNA Platform Technology Inventions (collectively, the “Licensee Prosecuted Patents”). As between the Parties, Licensee will bear and be solely responsible for all costs incurred after the Effective Date only in connection with the preparation, filing, prosecution or maintenance of any Licensee Prosecuted Patent that it best chooses to prepare, file, prosecute or maintain in the Territory. Before any substantive prosecution filing, Licensee will provide Licensor with a reasonable opportunity to review and comment on such prosecution efforts regarding the Licensee Prosecuted Patents as follows: Licensee will promptly provide Licensor with copies of all material communications from any patent authority regarding the Licensee Prosecuted Patents, and will provide Licensor, for its review and comment, with drafts of any material filings or responses to undertake be made to such patent authorities in a reasonable amount of time in advance of submitting such filings or responses. Licensee will consider in good faith any reasonable comments thereto provided by Licensor in connection with the prosecution of the Licensee Prosecuted Patents. Each Party will provide the other Party all actions necessary reasonable assistance and cooperation in the patent prosecution efforts provided in this Section 9.3(a), including executing any other required documents or instruments for such prosecution. Notwithstanding the foregoing, (i) Licensor will be responsible for preparing, filing, prosecuting and maintaining any patents covering any Licensor Inventions and Joint Inventions prior to the Option exercise, including any costs associated therewith; (ii) Licensor will be responsible for preparing, filing, prosecuting and maintaining any patents covering SNA Platform Technology Inventions that are Licensor Inventions or Joint Inventions, including any costs associated therewith; and (iii) Licensor will be responsible for preparing, filing, prosecuting and maintaining any patents covering SNA Platform Technology Inventions that are Licensee Inventions, and all costs associated therewith, regardless of the Option exercise. Before any substantive prosecution filing for patents covering SNA Platform Technology Inventions by Licensor, Licensor will provide Licensee reasonable opportunity to review and comment with respect to such patents. Before any filing for patents covering SNA Platform Technology Inventions invented by Licensee, Licensor will provide Licensee reasonable opportunity to review and comment with respect to such patent filings. (b) f Licensee decides not to prepare or file, or to abandon, any Licensee Prosecuted Patent or not to apply for an extension of any Licensee Prosecuted Patent, including a supplementary protection certificate or equivalent thereof, anywhere in the Territory, Licensee will promptly notify Licensor and Licensor may assume Licensee’s rights and responsibilities under this Section 9.3 with respect to such Licensee Prosecuted Patent, and in connection with 44 THE COMPANY HAS REQUESTED AN ORDER FROM THE SECURITIES AND EXCHANGE COMMISSION (THE “COMMISSION”) PURSUANT TO RULE 406 UNDER THE SECURITIES ACT OF 1933, AS AMENDED, GRANTING CONFIDENTIAL TREATMENT TO SELECTED PORTIONS. ACCORDINGLY, THE CONFIDENTIAL PORTIONS HAVE BEEN OMITTED FROM THIS EXHIBIT, AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION. OMITTED PORTIONS ARE INDICATED IN THIS EXHIBIT WITH “*****”. assuming such rights and responsibilities, including responsibility for costs, Licensor may prepare, file, prosecute, maintain or apply for any extension (including a supplementary protection certificate or equivalent thereof) and Licensor will thereafter control the prosecution and maintenance of the Licensed Patents, including prosecution of all patent applications, payment of maintenance, annuity, and renewal fees as required by the respective national, international or regional patent offices that issued the patents, and payment of all attorney fees and costs for prosecution, maintenance, and grant of any pending patent applications. LICENSEE may suggest specific countries in which it believes patent protection may be of value in view of its marketing strategy for the Licensed Products, however, selection of countries and/or regions for future international and national stage patent filings of Licensed Patents shall be within the sole discretion of LICENSOR. However, if LICENSEE wishes to pursue patent protection in a country or region in which LICENSOR has elected not to file, LICENSEE may request that LICENSOR pursue such patent protection at LICENSEE’s expense, which shall include all prosecution costs and maintenance fees. LICENSOR shall further have sole discretion in determining whether a particular patent or patent application has ceased to be of sufficient business value to warrant incurring additional prosecution and maintenance fees and costs, but shall notify LICENSEE of LICENSOR’s intention to allow the particular patent or patent application to lapse at least thirty days (30) prior to irretrievable abandonment so that LICENSEE may request that the patent or patent application be kept in force at LICENSEE’s expense. Any costs associated with patent prosecution and/or maintenance requested by LICENSEE after LICENSOR has given notice of its intent to forego patent rights or allow the patent or patent application to lapse will be borne by the LICENSEE. Notwithstanding anything in this Agreement to the contrary, as to any Licensed Licensee Prosecuted Patent which LICENSOR elects not to pursue, file, continue prosecuting or maintain in the United States, but which LICENSEE chooses have LICENSOR pursue, file, continue prosecuting or maintain and for which LICENSEE pays the preparation and/or prosecution costs and/or maintenance fees, LICENSEE shall have the authority to control the preparation and/or prosecution and/or maintenance thereof, and LICENSOR shall assign all rights, title and interest in and to any such Licensed Patents to LICENSEE, provided however, to the extent that any prosecution is controlled by LICENSEE, any arguments or positions taken during such prosecution may not impair the scope or construction of any Licensed Patent to which LICENSOR has retained the rightsTerritory.