Common use of STATUS OF THE PATENT RIGHTS Clause in Contracts

STATUS OF THE PATENT RIGHTS. (a) Pursuant to the * * * * agreed, with the advice of LICENSOR, to diligently prepare, file and prosecute the patent applications filed within the PATENT RIGHTS and LICENSOR agreed to reimburse * for the reasonable expenses associated therewith. Upon execution of this SUBLICENSE AGREEMENT, LICENSEE agrees to assume LICENSOR's obligation to reimburse * for patent expenses under the * * for patent expenses incurred after the EFFECTIVE DATE. LICENSOR shall instruct * to forward invoices for such patent expenses directly to LICENSEE and LICENSEE agrees to promptly pay such expenses. LICENSOR agrees to assure that * performs its obligations to maintain and prosecute the PATENT RIGHTS under the * * and LICENSOR agrees to enforce its rights vis-a-vis * in this regard on LICENSEE's behalf if necessary. LICENSOR does not however represent or warrant that any patent within the PATENT RIGHTS will be obtained or that any such patent so obtained will be valid and enforceable. (b) LICENSEE shall also be responsible for expenses associated with maintaining the patents obtained on the patent applications referred to in Article 10(a) hereof. (c) Upon request by LICENSEE, LICENSOR will advise, or ensure that * advises, LICENSEE of the status of all patent applications and patents within the PATENT RIGHTS. (d) Should LICENSEE elect not to continue paying the expenses for the maintenance or prosecution of any patent or patent application under the PATENT RIGHTS, it shall give LICENSOR thirty (30) days written notice thereof and LICENSOR may thereafter * 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.

STATUS OF THE PATENT RIGHTS. (a) 10.1 Pursuant to the * * * * SCRIPPS AGREEMENT, SCRIPPS agreed, with the advice of LICENSOR, to diligently prepare, file and prosecute the patent applications filed within the PATENT RIGHTS and LICENSOR agreed to reimburse * SCRIPPS for the reasonable expenses associated therewith. Upon execution of this SUBLICENSE AGREEMENT[***] 10.2 LICENSOR will advise, or ensure that SCRIPPS advises, LICENSEE agrees to assume LICENSOR's obligation to reimburse * for of the status of all patent expenses under applications and patents within the * * for patent expenses incurred after the EFFECTIVE DATEPATENT RIGHTS. LICENSOR will provide or will ensure that SCRIPPS provides LICENSEE with copies of any patent applications or amendments or continuations-in-part that it or SCRIPPS proposes to file with the U.S. Patent and Trademark Office and shall instruct * give LICENSEE the opportunity, for a period of at least five (5) business days after receipt, to forward invoices for review and comment on such patent expenses directly to LICENSEE and LICENSEE agrees to promptly pay such expensesapplications. LICENSOR agrees to assure that * performs its obligations to maintain and prosecute the PATENT RIGHTS under the * * and LICENSOR agrees to enforce its rights vis-a-vis * in this regard on LICENSEE's behalf if necessary. [***] Confidential treatment requested. 10.3 [***] 10.4 LICENSOR does not however represent or warrant that any patent within the PATENT RIGHTS will be obtained or that any such patent so obtained will be valid and enforceable. (b) LICENSEE shall also be responsible for expenses associated with maintaining the patents obtained on the patent applications referred to in Article 10(a) hereof. (c) Upon request by LICENSEE, LICENSOR will advise, or ensure that * advises. Specifically, LICENSEE acknowledges that the issuance and enforceability of the status of all any patent applications and patents application or patent within the PATENT RIGHTS. (d) Should LICENSEE elect not RIGHTS is subject to continue paying the expenses for the maintenance or prosecution outcome of any patent office proceeding, including any interference or opposition proceeding involving such patent or patent application and that LICENSOR makes no representation that any such patent application or patent will prevail in such proceeding. In the event such patent or patent application is not issued or upheld in such interference or opposition proceeding, LICENSEE's sole remedy is to terminate this SUBLICENSE AGREEMENT under Article 7.4 hereof. 10.5 The parties agree to cooperate in order to avoid loss of any rights which may otherwise be available to the parties under the PATENT RIGHTSU.S. Drug Price Competition and Patent Term Restoration Act of 1984, it shall give the Supplementary Certificate of Protection of the Member States of the European Community and other similar measures in any other country in the Territory. Without limiting the foregoing, LICENSEE agrees to notify LICENSOR thirty (30) days written notice thereof promptly upon receipt of an NDA or PLA approval to market any LICENSED PRODUCT in the United States and to timely supply LICENSOR may thereafter * Certain with all information on this page has been omitted and filed separately with the Commission. necessary to file an application for [***] Confidential treatment has been requested requested. patent term extension within the sixty (60) day period following U.S. NDA or PLA APPROVAL. The same shall apply with respect to the omitted portionsapproval by the health authorities in a country of the European Community or approval by the appropriate authorities in any other country in the Territory.

STATUS OF THE PATENT RIGHTS. (a) Pursuant to the * * * * agreed, with the advice of LICENSOR, to LICENSOR shall diligently prepare, file maintain and prosecute the patent applications filed within the PATENT RIGHTS and LICENSOR agreed RIGHT'S to reimburse * for the reasonable expenses associated therewith. Upon execution of this SUBLICENSE AGREEMENT, LICENSEE agrees to assume LICENSOR's obligation to reimburse * for patent expenses under the * * for patent expenses incurred after the EFFECTIVE DATE. LICENSOR shall instruct * to forward invoices for such patent expenses directly to LICENSEE and LICENSEE agrees to promptly pay such expenses. LICENSOR agrees to assure that * performs its obligations to maintain and prosecute the PATENT RIGHTS under the * * and LICENSOR agrees to enforce its rights vis-a-vis * in this regard on LICENSEE's behalf if necessaryobtain patents thereon. LICENSOR does not however represent or warrant that any such patent within will be obtained and LICENSOR shall in its sole discretion be responsible for determining whether to abandon any or all of said patent applications. Notwithstanding the aforementioned, LICENSOR shall provide LICENCEE with adequate opportunity to comment upon filing, maintenance and prosecution of the PATENT RIGHTS will be obtained or that and the opportunity to assume the maintenance and/or prosecution of any such patent so obtained will be valid and enforceablepart of the PATENT RIGHTS which LICENSOR decides to abandon. (b) LICENSEE LICENCEE shall also on receipt of invoices from LICENSOR reimburse LICENSOR for all reasonable costs incurred by LICENSOR in prosecuting and maintaining the PATENT RIGHTS before International and National Patent Offices. Such costs shall include but not be limited to official fees, professional services of patent agents and attorneys, renewal fees and extension fees. (c) LICENSOR shall be responsible for expenses associated with maintaining the patents obtained on the patent applications referred to in Article 10(a9(a) hereof. (cd) Upon request by LICENSEESubject to Article 9(a) hereof, nothing in this LICENCE AGREEMENT shall be construed to require LICENSOR to file or prosecute any patent application or to maintain any patent. (e) LICENSOR will advise, or ensure that * advises, LICENSEE advise LICENCEE regularly of the status of all patent applications and patents within the PATENT RIGHTS. (df) Should LICENSEE elect not Unless mutually agreed to continue paying in writing in advance, following notification by LICENSOR of the expenses deadline for the maintenance or prosecution entry of any patent or a patent application under the PATENT RIGHTS, it filed under the Patent Co-operation Treaty into its National and Regional Phase, LICENCEE shall give LICENSOR thirty (30) days written notice thereof should it wish to abandon seeking protection in any territories designated or retrospectively designated in the Patent Co-operation Treaty application. (g) From the date of notification by LICENCEE of its wish to abandon the seeking of patent protection pursuant to Article 9(f) hereof all said applications shall cease to form a part of the PATENT RIGHTS. (h) From the date of notification by LICENCEE of its wish to abandon the seeking of patent protection pursuant to Article 9(f) hereof LICENSOR shall cease to have any obligation whatsoever under rights embodied in said applications. (i) LICENCEE shall co-operate with LICENSOR in seeking any extension that is available or that becomes available in respect of the term of any patent within the PATENT RIGHTS including any patent that may issue on a patent application within the PATENT RIGHTS and LICENCEE shall diligently advise LICENSOR in a timely manner of approval by the Food and Drug Administration of the United States of America to USE, SELL or market LICENCED PRODUCTS or any other governmental approval obtained by or on behalf of LICENCEE or an AFFILIATE or SUBLICENCEE that is pertinent to any such extension and LICENCEE shall supply LICENSOR with any pertinent information and data in its possession or control or that is in the possession or control of any AFFILIATE or SUBLICENCEE of LICENCEE and shall cooperate fully in assisting LICENSOR to obtain any such extension that it may thereafter * Certain seek and LICENCEE shall supply LICENSOR in a timely manner with any information on and data and any supporting affidavits or documents required to comply with 35 USC 156 Extension of Patent Term (and any successor legislation) and any administrative rules or regulation thereunder or required to comply with any corresponding laws and regulations that are or shall be in effect in any country within the PATENT RIGHTS, all without further consideration. LICENCEE shall require its AFFILIATES and SUBLICENCEES to comply with this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portionsArticle 9.

STATUS OF THE PATENT RIGHTS. (a) Pursuant to the * * * * agreed, with the advice of LICENSOR, to LICENSOR shall diligently prepare, file maintain and prosecute the patent applications filed within the PATENT RIGHTS and LICENSOR agreed RIGHT'S to reimburse * for the reasonable expenses associated therewith. Upon execution of this SUBLICENSE AGREEMENT, LICENSEE agrees to assume LICENSOR's obligation to reimburse * for patent expenses under the * * for patent expenses incurred after the EFFECTIVE DATE. LICENSOR shall instruct * to forward invoices for such patent expenses directly to LICENSEE and LICENSEE agrees to promptly pay such expenses. LICENSOR agrees to assure that * performs its obligations to maintain and prosecute the PATENT RIGHTS under the * * and LICENSOR agrees to enforce its rights vis-a-vis * in this regard on LICENSEE's behalf if necessaryobtain patents thereon. LICENSOR does not however represent or warrant that any such patent within will be obtained and LICENSOR shall in its sole discretion be responsible for determining whether to abandon any or all of said patent applications. Notwithstanding the aforementioned, LICENSOR shall provide LICENCEE with adequate opportunity to comment upon filing, maintenance and prosecution of the PATENT RIGHTS will be obtained or that and the opportunity to assume the maintenance and/or prosecution of any such patent so obtained will be valid and enforceablepart of the PATENT RIGHTS which LICENSOR decides to abandon. (bc) LICENSEE LICENSOR shall also be responsible for expenses associated with maintaining the patents obtained on the patent applications referred to in Article 10(a9(a) hereof. (cd) Upon request by LICENSEESubject to Article 9(a) hereof, nothing in this LICENCE AGREEMENT shall be construed to require LICENSOR to file or prosecute any patent application or to maintain any patent. (e) LICENSOR will advise, or ensure that * advises, LICENSEE advise LICENCEE regularly of the status of all patent applications and patents within the PATENT RIGHTS. (df) Should LICENSEE elect not Unless mutually agreed to continue paying in writing in advance, following notification by LICENSOR of the expenses deadline for the maintenance or prosecution entry of any patent or a patent application under the PATENT RIGHTS, it filed under the Patent Co-operation Treaty into its National and Regional Phase, LICENCEE shall give LICENSOR thirty (30) days written notice thereof should it wish to abandon seeking protection in any territories designated or retrospectively designated in the Patent Co-operation Treaty application. (g) From the date of notification by LICENCEE of its wish to abandon the seeking of patent protection pursuant to Article 9(f) hereof all said applications shall cease to form a part of the PATENT RIGHTS. (h) From the date of notification by LICENCEE of its wish to abandon the seeking of patent protection pursuant to Article 9(f) hereof LICENSOR shall cease to have any obligation whatsoever under rights embodied in said applications. (i) LICENCEE shall co-operate with LICENSOR in seeking any extension that is available or that becomes available in respect of the term of any patent within the PATENT RIGHTS including any patent that may issue on a patent application within the PATENT RIGHTS and LICENCEE shall diligently advise LICENSOR in a timely manner of approval by the Food and Drug Administration of the United States of America to USE, SELL or market LICENCED PRODUCTS or any other governmental approval obtained by or on behalf of LICENCEE or an AFFILIATE or SUBLICENCEE that is pertinent to any such extension and LICENCEE shall supply LICENSOR with any pertinent information and data in its possession or control or that is in the possession or control of any AFFILIATE or SUBLICENCEE of LICENCEE and shall cooperate 19 fully in assisting LICENSOR to obtain any such extension that it may thereafter * Certain seek and LICENCEE shall supply LICENSOR in a timely manner with any information on and data and any supporting affidavits or documents required to comply with 35 USC 156 Extension of Patent Term (and any successor legislation) and any administrative rules or regulation thereunder or required to comply with any corresponding laws and regulations that are or shall be in effect in any country within the PATENT RIGHTS, all without further consideration. LICENCEE shall require its AFFILIATES and SUBLICENCEES to comply with this page has been omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the omitted portionsArticle 9.