Common use of Failure to Reimburse Clause in Contracts

Failure to Reimburse. If a Party elects not to reimburse the other Party for [***] percent ([***]%) of the costs and expenses of preparation, filing, prosecution and maintenance of a Patent application or Patent within the Combined Therapy Patent Rights in a given country, the non-reimbursed Party shall have the right, but not an obligation, to prepare, file, prosecute or maintain such Patent application or Patent in such country in its own name and at its own expense, with the prior written consent of the other Party (which shall not be unreasonably withheld) and the other Party shall promptly assign, without additional consideration, all of its rights, title and interest to the Patent application or Patent in said country and any inventions covered by such Patent application or Patent to the non-reimbursed Party if the non-reimbursed Party wishes to prepare, file, prosecute or maintain said Patent application or Patent. After giving effect to such assignment, such assigned invention and any corresponding Combined Therapy Patent Rights thereto shall be the treated as a BioXcel Independent Patent Rights or Nektar Independent Patent Rights, as applicable. The Party who does not wish to prepare, file, prosecute or maintain a Patent application or Patent within the Combined Therapy Patent in any country shall assist in the timely provision of all documents required under national provisions to register said assignment of rights with the corresponding national authorities at the sole expense of the Party who wished to prepare, file, prosecute or maintain such Patent application or Patent in that given country. Nektar shall have the right to disclose to BMS, subject to the confidentiality provisions of the SCA governing disclosures of Nektar confidential information to BMS, applications for Patents, amendments thereto, assignment-related documents and other related correspondence to and from Patent offices contemplated by this subsection (ii) to the extent necessary to comply with Nektar’s obligations under the SCA, provided that Nektar shall not disclose any confidential information of the CPI Compound supplier in connection therewith (to CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WHERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. be clear, nothing in the foregoing proviso shall prohibit Nektar from disclosing the Combined Therapy Study Data to BMS on the terms provided herein); and provided further, that Nektar remains liable to BioXcel for any breach by BMS of such confidentiality provisions.

Failure to Reimburse. If a Party elects Licensee may elect not to reimburse the other Party WU for [***] percent ([***]%) of the costs and expenses of preparation, filing, prosecution and maintenance of a Patent application amounts due under Section 9.2 in respect to one or Patent within the Combined Therapy more Patent Rights in patent and/or applications only by giving WU notice of such election at least ninety (90) days before the date on which the applicable cost or expense is to be incurred by WU (each an “Election Notice”). For purposes of this Section 9.3, a given country, cost or expense shall be deemed to be incurred by WU on the non-reimbursed Party shall have earlier of (a) the right, but not an obligation, to prepare, file, prosecute date WU actually pays the cost or maintain such Patent application or Patent in such country in its own name and at its own expense, with or (b) the prior written consent of date WU becomes obligated to pay the other Party cost or expense (which shall not be unreasonably withheld) and the other Party shall promptly assignwhich, without additional considerationfor example, all of its rights, title and interest to the Patent application or Patent in said country and any inventions covered by such Patent application or Patent to the non-reimbursed Party if the non-reimbursed Party wishes to prepare, file, prosecute or maintain said Patent application or Patent. After giving effect to such assignment, such assigned invention and any corresponding Combined Therapy Patent Rights thereto shall be the treated as date WU engages a BioXcel Independent third party to perform the service which gives rise to a commitment to pay any such cost or expense). Any such Election Notice shall specify the Patent Rights or Nektar Independent patents and/or applications to which such Election Notice relates (“Excluded Patent Rights”). In the event any Election Notice is given by Licensee, (x) the term “Patent Rights” shall be modified to exclude such Excluded Patent Rights, (y) the term “Technical Information” shall be modified to exclude any research and development information, unpatented inventions, know-how, data, methods, and technical data and information that relate solely to the Excluded Patent Rights (“Excluded Technical Information”), and (z) the term “Tangible Research Property” shall be modified to exclude any and all tangible research tools and other tangible personal property that WU may have provided to Licensee that relate solely to the Excluded Patent Rights (“Excluded Tangible Research Property”), in each instance as applicable. The Party who does not wish to prepare, file, prosecute or maintain a Patent application or Patent within the Combined Therapy Patent in any country shall assist in the timely provision of all documents required under national provisions to register said assignment of rights with the corresponding national authorities at the sole expense of the Party who wished date the Election Notice is given. Accordingly, and for the avoidance of doubt, as of the date the Election Notice is given, the license to preparethe Excluded Patent Rights, fileExcluded Technical Information and the Excluded Tangible Research Property granted to Licensee under Sections 2.1, prosecute 2.2 and 2.3 above shall terminate, and WU shall be free, without any further obligation to Licensee whatsoever, to abandon the applications or maintain such Patent application or Patent in that given country. Nektar shall have the right to disclose to BMS, patents subject to the confidentiality provisions Election Notice, or to continue prosecution or maintenance, for WU’s sole use and benefit, including a license to unrelated Third Parties, at WU’s option and sole cost and expense. Licensee agrees to deliver to WU, along with any Election Notice, all Excluded Technical Information and Excluded Tangible Research Property to which such Election Notice relates. For the avoidance of the SCA governing disclosures doubt, WU will not refund any amounts paid under Section 9.2 to WU prior to WU’s receipt of Nektar confidential information to BMS, applications for Patents, amendments thereto, assignment-related documents and other related correspondence to and from Patent offices contemplated by this subsection (ii) to the extent necessary to comply with Nektar’s obligations under the SCA, provided that Nektar shall not disclose any confidential information of the CPI Compound supplier in connection therewith (to CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WHERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT PURSUANT TO RULE 24B-2 PROMULGATED UNDER THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. be clear, nothing in the foregoing proviso shall prohibit Nektar from disclosing the Combined Therapy Study Data to BMS on the terms provided herein); and provided further, that Nektar remains liable to BioXcel for any breach by BMS of such confidentiality provisionsan Election Notice.