Common use of Responsibility for Patent Rights Clause in Contracts

Responsibility for Patent Rights. Avro will assume responsibility for the preparing, filing, prosecuting, maintaining and defending in all agency proceedings (e.g., reissues, reexaminations, oppositions and interferences), using patent counsel reasonably acceptable to UHN, patent rights within the Licensed Technology to the extent such patent rights are relevant to the Field of Use, or Avro is otherwise deemed to be responsible for prosecution in accordance with the terms of a Sponsored Research Agreement (“Field Patent Rights”) during the Term. Avro shall copy UHN on all patent prosecution documents and give UHN reasonable opportunities to advise Avro on such filing, prosecution and maintenance. In the event Avro desires to abandon any patent or patent application within the Field Patent Rights, Avro shall provide UHN with reasonable prior written notice of such intended abandonment or decline of responsibility. If UHN elects to continue such patent or patent application, the Parties shall consult and Avro may elect to retain responsibility therefor. Otherwise, the right to prepare, file, prosecute, maintain and defend the relevant Field Patent Rights, at UHN’s expense, shall revert to UHN. In such event, such UHN paid-for rights shall be removed from the definition of Licensed Patents under this Agreement and the licenses granted to Avro and its Affiliates as to such rights shall terminate. UHN retains its rights to prepare, file, prosecute, and maintain, and defend in all agency proceedings (e.g. reissues, reexaminations, oppositions and interferences), at UHN’s expense, patent rights within the Licensed Technology that are relevant outside the Field of Use (“UHN Patent Rights”). To the extent that patent rights are relevant both inside and outside the Field of Use, during the Option Term the Parties shall work cooperatively to make decisions with respect to preparing, filing, prosecuting, maintaining and defending such patent rights in all agency proceedings such that neither Party’s rights are jeopardized.

Responsibility for Patent Rights. Avro 7.1 Licensors will assume responsibility for retain sole and exclusive ownership of all rights, title and interest in and to the preparingPatent Rights and the Technology, filingsubject to the licenses granted to Licensee under this Agreement. Licensors will also retain all rights under the Patent Rights and Technology that are not expressly granted to Licensee (including, prosecutingwithout limitation, maintaining and defending in all agency proceedings (e.g., reissues, reexaminations, oppositions and interferencesrights outside of the Field), using patent counsel reasonably acceptable and shall have the right to UHNgrant further licenses to third parties with respect to such retained rights. 7.2 After the Effective Date, patent rights within the Licensed Technology to the extent such patent rights are relevant to the Field of Use, or Avro is otherwise deemed to Licensee shall be responsible for prosecution all costs and expenses involved in accordance with the terms prosecution, maintenance, enforcement and defense of a Sponsored Research Agreement (“Field all patent applications and patents that are included in the Patent Rights”) during . Licensee shall notify Licensors in writing before taking any substantive actions before any jurisdiction patent office related to the Term. Avro Patent Rights, and Licensee shall copy UHN on all patent prosecution documents seek Licensors' input and give UHN reasonable opportunities advice concerning substantive amendments to advise Avro on any Claim before taking such filing, prosecution and maintenanceaction. In the event Avro desires that Licensee elects not to abandon file, prosecute or maintain any patent or patent application within included in the Field Patent Rights, Avro Licensee shall provide UHN with reasonable prior written so notify Licensors in writing at least thirty (30) days before any applicable statutory bar date or response date to permit Licensors (at their own expense) to prosecution or maintain such right. 7.3 Licensee shall promptly notify Licensors upon becoming aware of any third-party actions which may constitute infringement of the Patent Rights in the Territory, or if any third party initiates actions seeking to invalidate or contest the enforceability or validity of one or more granted patents that are included in the Patent Rights. Any such notice of such intended abandonment shall identify the third party and describe the relevant actions in sufficient detail to enable Licensors to evaluate the alleged infringement or decline of responsibilityother action. If UHN elects to continue such patent or patent application, the Parties Licensors and Licensee shall consult and Avro may elect with each other to retain responsibility therefor. Otherwise, decide how to address such alleged infringement subject to terms to be agreed amongst the right to prepare, file, prosecute, maintain and defend the relevant Field Patent Rights, at UHN’s expense, shall revert to UHN. In such event, such UHN paid-for rights shall be removed from the definition of Licensed Patents under this Agreement and the licenses granted to Avro and its Affiliates as to such rights shall terminate. UHN retains its rights to prepare, file, prosecute, and maintain, and defend in all agency proceedings (e.g. reissues, reexaminations, oppositions and interferences), at UHN’s expense, patent rights within the Licensed Technology that are relevant outside the Field of Use (“UHN Patent Rights”). To the extent that patent rights are relevant both inside and outside the Field of Use, during the Option Term the Parties shall work cooperatively to make decisions with respect to preparing, filing, prosecuting, maintaining and defending such patent rights in all agency proceedings such that neither Party’s rights are jeopardizedparties on a case by case basis.

Responsibility for Patent Rights. Avro will assume responsibility for the preparing, filing, prosecuting, maintaining and defending in all agency proceedings (e.g., reissues, reexaminations, oppositions and interferences), using patent counsel reasonably acceptable to UHN, patent rights within the Licensed Technology to the extent such patent rights are relevant to the Field of Use, or Avro is otherwise deemed to be responsible for prosecution in accordance with the terms of a Sponsored Research Agreement (“Field Patent Rights”) during the Term. Avro shall copy UHN on all patent prosecution documents and give UHN reasonable opportunities to advise Avro on such filing, prosecution and maintenance. In the event Avro desires to abandon any patent or patent application within the Field Patent Rights, Avro shall provide UHN with reasonable prior written notice of such intended abandonment or decline of responsibility. If UHN elects to continue such patent or patent application, the Parties shall consult and Avro may elect to retain responsibility therefor. Otherwise, the right to prepare, file, prosecute, maintain and defend the relevant Field Patent Rights, at UHN’s expense, shall revert to UHN. In such event, such UHN paid-for rights shall be removed from the definition of Licensed Patents under this Agreement and the licenses granted to Avro and its Affiliates as to such rights shall terminate. UHN retains its rights to prepare, file, prosecute, and maintain, and defend in all agency proceedings (e.g. reissues, reexaminations, oppositions and interferences), at UHN’s expense, patent rights within the Licensed Technology that are relevant outside the Field of Use (“UHN Patent Rights”). To the extent that patent rights are relevant both inside and outside the Field of Use, during the Option Term the Parties shall work cooperatively to make decisions with respect to preparing, filing, prosecuting, maintaining and defending such patent rights in all agency proceedings such that neither Party’s rights are jeopardized.. *** Confidential Treatment Requested ***