Common use of Intellectual Property Prosecution and Maintenance Clause in Contracts

Intellectual Property Prosecution and Maintenance. VeroScience shall prosecute and maintain the intellectual property in the Territory related to the Product and necessary to Manufacture and Commercialize in the Territory pursuant to this Agreement, including the VeroScience Patents, the Listed Patents and the Product Trademarks. VeroScience shall make available to Santarus (or its designated counsel) copies of patent application files and shall make available to Santarus (or its designated counsel) all office actions relating to any patent applications wherein at least one (1) claim is directed to the Product in those patent applications, and copies of material correspondence with the U.S. Patent and Trademark Office relating to such patent applications to the extent they relate to the Product or its use. Santarus shall have the right to comment upon the prosecution of such patent applications. VeroScience shall, in good faith, consider such comments of Santarus. In addition, VeroScience shall keep Santarus reasonably informed regarding material developments relating to the prosecution, maintenance or enforcement of VeroScience’s intellectual property rights related to the Product outside the Territory that could reasonably be expected to have a material impact on VeroScience’s intellectual property rights related to the Product in the Territory. For the avoidance of doubt, VeroScience and S2 shall remain responsible for all expenses relating to the preparation, filing, prosecution and maintenance of the intellectual property in the Territory related to the Product and necessary to Manufacture and Commercialize in the Territory pursuant to this Agreement, including the VeroScience Patents, the Listed Patents, the Product Trademarks and any copyrights associated with the Promotional Materials. In the event that VeroScience notifies Santarus that it no longer wishes to prosecute or maintain the intellectual property in the Territory related to the Product and necessary to Manufacture and Commercialize in the Territory pursuant to this Agreement, VeroScience shall promptly notify Santarus in writing sufficiently in advance to any relevant deadline so that Santarus may, at its discretion, assume the responsibility for the prosecution or maintenance of such intellectual property in its own name and at its sole expense. In the event that Santarus also decides not to continue the prosecution or maintenance of such intellectual property, Santarus shall promptly notify S2 in writing sufficiently in advance to any relevant deadline so that S2 may, at its discretion, assume the responsibility for the prosecution or maintenance of such intellectual property in its own name and at its sole expense.

Intellectual Property Prosecution and Maintenance. VeroScience shall prosecute and maintain the intellectual property in the Territory related to the Product and necessary to Manufacture and Commercialize in the Territory pursuant to this Agreement, including the VeroScience Patents, the Listed Patents and the Product Trademarks. VeroScience shall make available to Santarus (or its designated counsela) copies of patent application files and shall make available to Santarus (or its designated counsel) all office actions relating to any patent applications wherein at least one (1) claim is directed to the Product in those patent applications, and copies of material correspondence with the U.S. Patent and Trademark Office relating to such patent applications to the extent they relate to the Product or its use. Santarus TRANSFEREE shall have the right to comment upon the prosecution of such patent applications. VeroScience shallright, in good faith, consider such comments of Santarus. In addition, VeroScience shall keep Santarus reasonably informed regarding material developments relating to the prosecution, maintenance or enforcement of VeroScience’s intellectual property rights related to the Product outside the Territory that could reasonably be expected to have a material impact on VeroScience’s intellectual property rights related to the Product in the Territory. For the avoidance of doubt, VeroScience and S2 shall remain responsible for all expenses relating to the preparation, filing, prosecution and maintenance of the intellectual property in the Territory related to the Product and necessary to Manufacture and Commercialize in the Territory pursuant to this Agreement, including the VeroScience Patents, the Listed Patents, the Product Trademarks and any copyrights associated with the Promotional Materials. In the event that VeroScience notifies Santarus that it no longer wishes to prosecute or maintain the intellectual property in the Territory related to the Product and necessary to Manufacture and Commercialize in the Territory pursuant to this Agreement, VeroScience shall promptly notify Santarus in writing sufficiently in advance to any relevant deadline so that Santarus may, at its discretion, assume the responsibility for the prosecution or maintenance of such intellectual property in its own name and at its sole own expense. In , to prepare, file, prosecute, and maintain the event that Santarus also decides not to continue Assigned Hemiwedge Intellectual Property. (b) TRANSFEROR shall have the prosecution or maintenance of such intellectual propertyfirst right, Santarus shall promptly notify S2 in writing sufficiently in advance to any relevant deadline so that S2 may, at its discretion, assume the responsibility for the prosecution or maintenance of such intellectual property in its own name and at its sole own expense, to prepare, file, prosecute, and maintain the Licensed Hemiwedge Intellectual Property. (c) TRANSFEROR shall provide written notice as soon as possible to TRANSFEREE if TRANSFEROR decides not to prosecute, to abandon, not to pursue foreign rights claiming priority to earlier rights, or to otherwise cause or allow any of its rights in the Licensed Hemiwedge Intellectual Property to be forfeited (collectively “Forfeited Rights”), and in any event not less than thirty (30) days before any governmental, procedural, or administrative deadline bringing about or triggering such Forfeited Rights. If TRANSFEREE receives notice from TRANSFEROR of a decision to allow Forfeited Rights, or if TRANSFEREE is aware of a deadline less than thirty (30) days away that would result in Forfeited Rights, TRANSFEREE shall have the right, in its own name and at its own expense, to prepare, file, prosecute, and maintain any of the Licensed Hemiwedge Intellectual Property applicable to or usable in any of the Combined Fields of Use in which TRANSFEROR intends to allow Forfeited Rights or has failed to take action within thirty (30) days of a deadline that would result in Forfeited Rights. If TRANSFEREE prosecutes and maintains any of the licensed Hemiwedge Intellectual Property, TRANSFEREE shall grant to TRANSFEROR a royalty free license to use any patents rights not within the Combined Fields of Use. (d) If TRANSFEREE exercises its rights under Section 7.1(c), TRANSFEROR shall: (i) take all necessary actions, sign documents, and generally assist TRANSFEREE in maintaining and/or obtaining the Licensed Hemiwedge Intellectual Property, and (ii) immediately assign and cause its employees and consultants to assign such Intellectual Property to TRANSFEREE, subject to any licenses relating to same. (e) TRANSFEROR hereby irrevocably constitutes and appoints TRANSFEREE as its true and lawful attorney-in-fact with full power of substitution, in the name of TRANSFEROR or otherwise, and on behalf of and for the benefit of TRANSFEREE, to execute and deliver such further agreements, documents, certificates and other instruments of conveyance, assignment and transfer reasonably necessary to vest in TRANSFEREE all of TRANSFEROR’s right, title and interest in and to the Licensed Hemiwedge Intellectual Property described in the previous subsections; to institute and prosecute, in the name of TRANSFEROR or otherwise, all proceedings that TRANSFEREE may deem proper in order to assert or enforce any claim, right or title of any kind in and to such Licensed Hemiwedge Intellectual Property and the Hemiwedge Products; to defend and compromise any and all actions, suits or proceedings in respect of any part thereof; and to do all such acts and things in relation thereto as TRANSFEREE shall deem advisable. TRANSFEROR agrees that the foregoing powers are coupled with an interest and shall be irrevocable by TRANSFEROR or by its dissolution or in any manner or for any reason.