Common use of Administration of the Option Clause in Contracts

Administration of the Option. 7.01 Subject to Sections 3.01.1, 3.02 and UMD’s publication rights under Section 7.02, during the term of an Option Year, UMD shall not market, disclose or license any Option IP disclosed in that Option Year to any third party or take any other action that would impact its ability to grant the licenses contemplated by this Option Agreement. UMD hereby represents that, as of the effective date, it has the right to grant the rights set forth in this Option Agreement and each License Amendment to Licensee; provided, however, that the foregoing is not intended to function as a representation of title or non-infringement. 7.02 In the event the UMD, its employees and students (the “Publishers”) wish to make any publication relating to any Option Intellectual Property, UMD shall provide Licensee, at least [***] prior to the first submission, publication or presentation, a copy of the abstract, paper or manuscript for review and comment. Licensee’s review shall be limited to a determination of whether the publication discloses patentable information or any confidential information disclosed by Licensee to UMD and whether Licensee desires to have its confidential information deleted or to seek patent protection for the patentable information prior to publication. In the latter case, publication may be delayed up to [***] after receipt of written notice from Licensee that it is filing for patent protection. In the former case, the author shall promptly remove Licensee confidential information from the abstract, paper or manuscript. Should Licensee’s review find no patentable or confidential information, Licensee shall immediately notify UMD. Any delay in publication shall conform to the University of Maryland Policy on Classified and Proprietary Work, as approved and periodically amended by the Board of Regents. The author of any publication shall have the final right and authority to determine the scope and content of a publication, subject only to Licensee’s limited right of review for confidential or patentable information. 7.03 UMD and Licensee shall jointly consider the filing of all patent applications relating to the Option Intellectual Property. 7.04 All patent filings will be made in the name of the University of Maryland, College Park when all inventors are UMD employees. Unless otherwise agreed to in writing, UMD shall prepare, file, prosecute, maintain and defend all patents by patent counsel selected by Licensee and approved by UMD, whose approval will not be unreasonably delayed or withheld. Final decisions regarding any particular application or course of action during application, prosecution, maintenance or defense shall be reserved to UMD; provided, however, that UMD shall file any patent application that would qualify as Option Intellectual Property where all inventors are UMD employees (or UMD has all rights to such invention or rights to prosecute such patent application from a co-owner) in any country as requested by Licensee. Licensee and UMD shall jointly consider the filing of any patent applications relating to the Option Intellectual Property where UMD and a third party are inventors of the given invention. Licensee understands that all patent filings will be made jointly with the University of Maryland, College Park when at least one inventor from each of UMD and Licensee are named as co-inventors on a patent application in the Field; the final decision regarding the filing of any particular application or to pursue a course of action during prosecution of the application(s) when such application recites subject matter invented jointly by the Parties is reserved to Licensee provided UMD shall have reasonable opportunities to advise Licensee regarding such action and Licensee shall copy UMD on all patent applications and prosecution documents. 7.05 Licensee shall have reasonable opportunities to advise UMD regarding patent applications relating to the Option Intellectual Property; will cooperate with UMD in the filing, prosecution maintenance and defense of each application or patent, and will advise UMD of any material developments with respect to such actions. UMD and Licensee agree to cooperate to assure the United States patent applications adequately and accurately reflect, to the best of their knowledge, all items of commercial interest and importance. 7.06 UMD shall copy Licensee on all patent applications and prosecution documents and will not seek to narrow substantially the scope of or irrevocably abandon a pending application or cease prosecution, maintenance or defense on an issued patent without giving Licensee adequate prior notice and an opportunity to comment. If UMD elects to abandon an application or cease prosecution or maintenance of a patent, the parties shall decide, in good faith, how to proceed in the light of the circumstances, taking into account any obligations UMD may have under Federal law or UMD policy.

Administration of the Option. 7.01 Subject to Sections 3.01.1, 3.02 and UMDDUKE’s publication rights under Section 7.02, during the term of an Option Year, UMD DUKE shall not market, disclose or license any Option IP disclosed in that Option Year to any third party or take any other action that would impact its ability to grant the licenses contemplated by this Option Agreement. UMD hereby OLV represents that, that as of the effective dateEffective Date, it has the right to grant the rights set forth in this Option Agreement and each DUKE License Amendment to Licensee; provided, however, that the foregoing is not intended to function as a representation of title or non-infringement. 7.02 In the event the UMDDUKE, its employees and students (the “Publishers”) wish to make any publication relating to any Option Intellectual Property, UMD DUKE shall provide Licensee, at least [***] prior to the first submission, publication or presentation, a copy of the abstract, paper or manuscript for review and comment. Licensee’s time is of the essence review shall be limited to a determination of whether the publication discloses patentable information or any confidential information disclosed by Licensee to UMD DUKE and whether Licensee desires to have its confidential information deleted or to seek patent protection for the patentable information prior to publication. In the latter case, publication may be delayed up to [***] after receipt of written notice from Licensee that it is filing for patent protection. In the former case, the author shall promptly remove Licensee confidential information from the abstract, paper or manuscript. Should ‘should Licensee’s review find no patentable or confidential information, Licensee shall immediately notify UMD. Any delay in publication shall conform to the University of Maryland Policy on Classified and Proprietary Work, as approved and periodically amended by the Board of RegentsDUKE. The author of any publication shall have the final right and authority to determine the scope and content of a publication, subject only to Licensee’s limited right of review for confidential or patentable information. 7.03 UMD DUKE and Licensee shall jointly consider the filing of all patent applications relating to the Option Intellectual Property. 7.04 All patent filings will be made in the name of the University of Maryland, College Park DUKE when all inventors are UMD DUKE employees. Unless otherwise agreed to in writing, UMD DUKE shall prepare, file, prosecute, maintain and defend all patents by patent counsel selected by Licensee and approved by UMDDUKE, whose approval will not be unreasonably delayed or withheld. Final decisions regarding any particular application or course of action during application, prosecution, maintenance or defense shall be reserved to UMDDUKE; provided, however, that UMD DUKE shall file any patent application that would qualify as Option Intellectual Property where all inventors are UMD DUKE employees (or UMD DUKE has all rights to such invention or rights to prosecute such patent application from a co-owner) in any country as requested by Licensee. Licensee and UMD DUKE shall jointly consider the filing of any patent applications relating to the Option Intellectual Property where UMD DUKE and a third party are inventors of the a given invention. Licensee understands that all patent filings will be made jointly with the University of Maryland, College Park DUKE when at least one inventor from each of UMD DUKE and Licensee are named as co-inventors on a patent application in the Field; the final decision regarding the filing of any particular application or to pursue a course of action during prosecution of the application(s) when such application recites subject subject, matter invented jointly by the Parties is reserved to Licensee provided UMD DUKE shall have reasonable opportunities to advise Licensee regarding such action and Licensee shall copy UMD DUKE on all patent applications and prosecution documents. 7.05 Licensee shall have reasonable opportunities to advise UMD DUKE regarding patent applications relating to the Option Intellectual Property; will cooperate with UMD DUKE in the filing, prosecution maintenance and defense of each application or patent, and will advise UMD DUKE of any material developments with respect to such actions. UMD DUKE and Licensee agree to cooperate to assure the United States patent applications adequately and accurately reflect, to the best of their knowledge, all items of commercial interest and importance. 7.06 UMD DUKE shall copy Licensee on all patent applications and prosecution documents and will not seek to narrow substantially the scope of or irrevocably abandon a pending application or cease prosecution, maintenance or defense on an issued patent without giving Licensee adequate prior notice and an opportunity to comment. If UMD DUKE elects to abandon an application or cease prosecution or maintenance of a patent, the parties shall decide, in good faith, how to proceed in the light of the circumstances, taking into account any obligations UMD DUKE may have under Federal law or UMD DUKE policy.