Common use of Responsibility for Patent Rights Clause in Contracts

Responsibility for Patent Rights. M.I.T. shall prepare, file, prosecute, and maintain all of the PATENT RIGHTS. COMPANY shall have reasonable opportunities to advise M.I.T. and shall cooperate with M.I.T. in such filing, prosecution and maintenance. M.I.T. shall instruct its patent counsel to copy COMPANY on all patent prosecution documents relating to the PATENT RIGHTS and shall provide COMPANY a reasonable opportunity to review and comment on such materials. M.I.T. shall consider in good faith any comments received from COMPANY relating to prosecution and maintenance of the PATENT RIGHTS (including, without limitation, comments from COMPANY that prosecution and maintenance efforts for any PATENT RIGHT should be discontinued). M.I.T. shall not abandon any of the PATENT RIGHTS for which COMPANY is bearing expenses without COMPANY’s prior written consent. In the event that COMPANY desires to discontinue its support of any patent or patent application within the PATENT RIGHTS in any particular country or countries, COMPANY shall provide M.I.T. with at least [***] days prior written notice of such intended discontinuance of support. In such event, on a country-by-country basis, (i) any such patent or patent application (the “RETURNED RIGHTS”) shall be removed from the definition of PATENT RIGHTS under this Agreement, (ii) the licenses granted to COMPANY and its AFFILIATES as to such RETURNED RIGHTS shall terminate, (iii) COMPANY shall have no further obligation with respect to such RETURNED RIGHTS pursuant to Section 6.3, and (iv) M.I.T. shall have the unrestricted right to license such RETURNED RIGHTS to third parties. Notwithstanding the foregoing, M.I.T. may elect, at its sole discretion, acting reasonably and in good faith, on a country-by-country basis, as an alternative to terminating the licenses granted to COMPANY and its AFFILIATES to such RETURNED RIGHTS as set forth in clause (ii) above, (I) to terminate the exclusivity of the license with respect to such RETURNED RIGHTS in the applicable country and (II) to continue to prosecute and maintain the RETURNED RIGHTS at its own expense. If M.I.T. makes such election, COMPANY and its AFFILIATES (A) shall retain a non-exclusive license under the RETURNED RIGHTS in the applicable country, and (B) will be obligated to pay a royalty on NET SALES of LICENSED PRODUCTS and LICENSED PROCESSES at a rate that is [***] percent ([***]%) of the rates set forth in Section 4.1(d) in the countries where it has non-exclusive rights, and M.I.T. shall have the unrestricted right to grant to third parties non-exclusive licenses under the RETURNED RIGHTS in such countries.

Responsibility for Patent Rights. M.I.T. shall prepare, file, prosecute, and maintain all of the PATENT RIGHTS. COMPANY shall have reasonable opportunities to advise M.I.T. and shall cooperate with M.I.T. in such filing, prosecution and maintenance. Without limiting the generality of the foregoing, M.I.T. shall instruct its patent counsel to copy provide COMPANY on with copies of all patent prosecution documents applications and other related material submissions and correspondence with any patent authorities relating to the PATENT RIGHTS and shall provide COMPANY a reasonable opportunity period of time to review and comment on such materialsmaterials (assuming M.I.T. has itself received such documents in time to provide such reasonable notice). M.I.T. shall consider in good faith accept and effect any comments received from COMPANY relating to prosecution and maintenance of the PATENT RIGHTS (including, without limitation, comments from COMPANY that prosecution and maintenance efforts for any PATENT RIGHT should be discontinued). M.I.T. shall not abandon any of the PATENT RIGHTS for which M.I.T. Case Nos. [***] (collectively, the “Specified Patent Rights”) unless M.I.T. determines, in its sole discretion, that the acceptance of such comments would materially impair the rights of M.I.T. or any other licensee. M.I.T. shall give good faith consideration to and effect any comments from COMPANY is bearing expenses without COMPANY’s prior written consentrelating to the PATENT RIGHTS for cases other than the Specified Patent Rights, to the extent feasible, unless M.I.T. determines, in its sole discretion, that the acceptance of such comments would impair the rights of M.I.T. or any other licensee. In the event that COMPANY desires to discontinue its support of any patent or patent application within the PATENT RIGHTS in any particular country or countriesRIGHTS, COMPANY shall provide M.I.T. with at least [***] days prior written notice of such intended discontinuance of support. In such event, on a country-by-country basis, (i) any such patent or patent application (the “RETURNED RIGHTS”) shall be removed from the definition of PATENT RIGHTS under this Agreement, (ii) the licenses granted to COMPANY and its AFFILIATES as to such RETURNED RIGHTS rights shall terminate, and (iii) COMPANY shall have no further obligation with respect to such RETURNED RIGHTS rights pursuant to Section 6.3, and (iv) M.I.T. shall have the unrestricted right to license such RETURNED RIGHTS to third parties. Notwithstanding the foregoing, M.I.T. may elect, at its sole discretion, acting reasonably and in good faith, on a country-by-country basis, as an alternative to terminating the licenses granted to COMPANY and its AFFILIATES to such RETURNED RIGHTS as set forth in clause (ii) above, (I) to terminate the exclusivity of the license with respect to such RETURNED RIGHTS in the applicable country and (II) to continue to prosecute and maintain the RETURNED RIGHTS at its own expense. If M.I.T. makes such election, COMPANY and its AFFILIATES (A) shall retain a non-exclusive license under the RETURNED RIGHTS in the applicable country, and (B) will be obligated to pay a royalty on NET SALES of LICENSED PRODUCTS and LICENSED PROCESSES at a rate that is [***] percent ([***]%) of the rates set forth in Section 4.1(d) in the countries where it has non-exclusive rights, and M.I.T. shall have the unrestricted right to grant to third parties non-exclusive licenses under the RETURNED RIGHTS in such countries.

Responsibility for Patent Rights. M.I.T. shall prepare, file, prosecute, and maintain all of the PATENT RIGHTS. COMPANY shall have reasonable opportunities to advise M.I.T. and shall cooperate with M.I.T. in such filing, prosecution and maintenance. Without limiting the generality of the foregoing, M.I.T. shall instruct its patent counsel to copy provide COMPANY on with copies of all patent prosecution documents applications and other related material submissions and correspondence with any patent authorities relating to the PATENT RIGHTS and shall provide COMPANY a reasonable opportunity period of time to review and comment on such materialsmaterials (assuming M.I.T. has itself received such documents in time to provide such reasonable notice). M.I.T. shall consider in good faith accept and effect any comments received from COMPANY relating to prosecution and maintenance of the PATENT RIGHTS (including, without limitation, unless M.I.T. reasonably determines that the acceptance of such comments from COMPANY that prosecution and maintenance efforts for would materially impair the rights of M.I.T. or any PATENT RIGHT should be discontinued). M.I.T. shall not abandon any of the PATENT RIGHTS for which COMPANY is bearing expenses without COMPANY’s prior written consentother licensee. In the event that COMPANY desires to discontinue its support abandon any claim of any patent or patent application or any patent or patent application within the PATENT RIGHTS in any particular country or countriesRIGHTS, COMPANY shall provide M.I.T. with at least [***] days prior written notice of such intended discontinuance abandonment or decline of supportresponsibility, and the right to prepare, file, prosecute, and maintain the relevant *** Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. PATENT RIGHTS, at M.I.T.’s expense, shall revert to M.I.T. In such event, on a country-by-country basis, (i) any such patent or patent application (the “RETURNED RIGHTS”) M.I.T. paid- for rights shall be removed from the definition of PATENT RIGHTS under this Agreement, (ii) Agreement and the licenses granted to COMPANY and its AFFILIATES as to such RETURNED RIGHTS rights shall terminate, (iii) COMPANY shall have no further obligation with respect to such RETURNED RIGHTS pursuant to Section 6.3, and (iv) M.I.T. shall have the unrestricted right to license such RETURNED RIGHTS to third parties. Notwithstanding the foregoing, M.I.T. may elect, at its sole discretion, acting reasonably and in good faith, on a country-by-country basis, as an alternative to terminating the licenses granted to COMPANY and its AFFILIATES to such RETURNED RIGHTS as set forth in clause (ii) above, (I) to terminate the exclusivity of the license with respect to such RETURNED RIGHTS in the applicable country and (II) to continue to prosecute and maintain the RETURNED RIGHTS at its own expense. If M.I.T. makes such election, COMPANY and its AFFILIATES (A) shall retain a non-exclusive license under the RETURNED RIGHTS in the applicable country, and (B) will be obligated to pay a royalty on NET SALES of LICENSED PRODUCTS and LICENSED PROCESSES at a rate that is [***] percent ([***]%) of the rates set forth in Section 4.1(d) in the countries where it has non-exclusive rights, and M.I.T. shall have the unrestricted right to grant to third parties non-exclusive licenses under the RETURNED RIGHTS in such countries.

Responsibility for Patent Rights. M.I.T. shall prepare, file, prosecute, and maintain all of the PATENT RIGHTS. COMPANY shall have reasonable opportunities to advise M.I.T. and shall cooperate with M.I.T. in such filing, prosecution and maintenance. Without limiting the generality of the foregoing, M.I.T. shall instruct its patent counsel to copy provide COMPANY on with copies of all patent prosecution documents applications and other related material submissions and correspondence with any patent authorities relating to the PATENT RIGHTS and shall provide COMPANY a reasonable opportunity period of time to review and comment on such materialsmaterials (assuming M.I.T. has itself received such documents in time to provide such reasonable notice). M.I.T. shall consider in good faith accept and effect any comments received from COMPANY relating to prosecution and maintenance of the PATENT RIGHTS (including, without limitation, unless M.I.T. reasonably determines that the acceptance of such comments from COMPANY that prosecution and maintenance efforts for would materially impair the rights of M.I.T. or any PATENT RIGHT should be discontinued). M.I.T. shall not abandon any of the PATENT RIGHTS for which COMPANY is bearing expenses without COMPANY’s prior written consentother licensee. In the event that COMPANY desires to discontinue its support abandon any claim of any patent or patent application or any patent or patent application within the PATENT RIGHTS in any particular country or countriesRIGHTS, COMPANY shall provide M.I.T. with at least [***] days prior written notice of such intended discontinuance abandonment or decline of supportresponsibility, and the right to prepare, file, prosecute, and maintain the relevant *** Certain information on this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portions. PATENT RIGHTS, at M.I.T.’s expense, shall revert to M.I.T. In such event, on a country-by-country basis, (i) any such patent or patent application (the “RETURNED RIGHTS”) M.I.T. paid- for rights shall be removed from the definition of PATENT RIGHTS under this Agreement, (ii) Agreement and the licenses granted to COMPANY and its AFFILIATES as to such RETURNED RIGHTS rights shall terminate, (iii) COMPANY shall have no further obligation with respect to such RETURNED RIGHTS pursuant to Section 6.3, and (iv) M.I.T. shall have the unrestricted right to license such RETURNED RIGHTS to third parties. Notwithstanding the foregoing, M.I.T. may elect, at its sole discretion, acting reasonably and in good faith, on a country-by-country basis, as an alternative to terminating the licenses granted to COMPANY and its AFFILIATES to such RETURNED RIGHTS as set forth in clause (ii) above, (I) to terminate the exclusivity of the license with respect to such RETURNED RIGHTS in the applicable country and (II) to continue to prosecute and maintain the RETURNED RIGHTS at its own expense. If M.I.T. makes such election, COMPANY and its AFFILIATES (A) shall retain a non-exclusive license under the RETURNED RIGHTS in the applicable country, and (B) will be obligated to pay a royalty on NET SALES of LICENSED PRODUCTS and LICENSED PROCESSES at a rate that is [***] percent ([***]%) of the rates set forth in Section 4.1(d) in the countries where it has non-exclusive rights, and M.I.T. shall have the unrestricted right to grant to third parties non-exclusive licenses under the RETURNED RIGHTS in such countries.