Common use of Patent Maintenance and Reimbursement Clause in Contracts

Patent Maintenance and Reimbursement. 6.1 PENN shall control, with input from ADEZA, the prosecution and maintenance of PENN PATENT RIGHTS. PENN's Patent Counsel shall be selected and agreed upon to the satisfaction of PENN and ADEZA. ADEZA shall be permitted to communicate directly with PENN's Patent Counsel to maintain and prosecute the PENN PATENT RIGHTS provided that ADEZA, PENN, and PENN's Patent Counsel shall copy one another on all correspondence and documents pertaining to the PENN PATENT RIGHTS within the FIELD and THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. CONFIDENTIAL TREATMENT REQUESTED shall not file any document pertaining to the PENN PATENT RIGHTS within the FIELD with the U.S. or any other country patent office without PENN's prior review and approval. 6.2 ADEZA shall enter into a billing agreement, in form and substance reasonably satisfactory to PENN, ADEZA, and PENN's Patent Counsel with respect to all of the PENN PATENT RIGHTS within the FIELD, pursuant to which ADEZA shall agree to pay directly to such counsel on behalf of PENN such counsel's attorneys' fees, expenses, official fees and other charges in connection with the filing and prosecution of the patent applications and maintenance of PENN PATENT RIGHTS within the FIELD that PENN and ADEZA have mutually agreed to prosecute and maintain. PENN may at PENN's own expense continue to prosecute such claims that ADEZA does not decide to pursue. 6.3 PENN shall retain all right, title and interest in and to the PENN PATENT RIGHTS and other intellectual property protection related thereto except those rights of ADEZA pursuant to this AGREEMENT.

Patent Maintenance and Reimbursement. 6.1 PENN 7.1 Penn shall controlcontrol and diligently prosecute and maintain Penn Patent Rights. Penn and Targeted shall decide upon a mutually agreeable choice of patent counsel and a mutually agreeable budget for and course of prosecution, with input from ADEZA, the prosecution and maintenance of PENN PATENT RIGHTS. PENN's Patent Counsel Targeted shall be selected and agreed upon to the satisfaction of PENN and ADEZA. ADEZA shall be permitted to communicate directly with PENN's Patent Counsel to maintain and prosecute the PENN PATENT RIGHTS provided that ADEZA, PENN, and PENN's Patent Counsel shall copy one another copied on all substantive correspondence and documents pertaining regarding such Penn Patent Rights. The parties acknowledge that neither of them currently has an intention to terminate or substantially reduce the PENN PATENT RIGHTS within the FIELD and THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. CONFIDENTIAL TREATMENT REQUESTED shall not file any document pertaining to the PENN PATENT RIGHTS within the FIELD with the U.S. or any other country patent office without PENN's prior review and approval. 6.2 ADEZA shall enter into a billing agreement, in form and substance reasonably satisfactory to PENN, ADEZA, and PENN's Patent Counsel with respect to all scope of the PENN PATENT RIGHTS engagement of the patent counsel used for such purposes by Penn prior to and as of the Effective Date. Subject to Sections 7.2 and 7.3, Targeted shall pay, or shall reimburse Penn within the FIELDsixty (60) days of receipt of invoice for, pursuant to which ADEZA shall agree to pay directly to such counsel on behalf of PENN such counsel's all documented third party attorneys' ’ fees, expenses, official fees and other charges in connection with incident to the filing and prosecution of the patent applications preparation, prosecution, licensing and maintenance of PENN PATENT RIGHTS within Penn Patent Rights, including interferences, oppositions, etc. brought or defended in accordance with the FIELD that PENN and ADEZA have mutually agreed budget for and course of prosecution. Penn shall provide Targeted with itemized statements reflecting these expenses quarterly. In the event that Penn should decide not to file, prosecute or maintain applications and maintain. PENN may patents for such Penn Patent Rights, Targeted shall have the opportunity to do so at PENN's own expense continue to prosecute such claims that ADEZA does not decide to pursueTargeted’s sole expense. 6.3 PENN shall retain all right7.2 Except with respect to licenses granted by Penn to [*] pursuant to Section 2.2.2, title and interest in and if Penn at any time prior to or after the PENN PATENT RIGHTS and other intellectual property protection related thereto except those Effective Date grants or has granted any rights or licenses to or for the benefit of any Non-Targeted Party under any of the Penn Patent Rights, i.e., where it may do so outside the scope of the exclusive rights of ADEZA pursuant Targeted or the Covered Affiliates hereunder, Penn shall [*]. For clarity, this Section 7.2 shall apply, without limitation, to [*], which were licensed [*] under the Original Agreement and which are licensed [*] under this AGREEMENTAgreement. 7.3 If Targeted elects to discontinue payment for the filing, prosecution, and/or maintenance of any patent application and/or patent contained in the Penn Patent Rights (or with respect to any particular claims therein), it shall so notify Penn, and any such patent application or patent (or such claims, as applicable) shall thereupon be excluded from the definition of Penn Patent Rights and from the scope of the licenses granted under this Agreement, and all rights relating thereto shall revert to Penn and may be freely used or licensed by Penn. 7.4 Targeted, the Covered Affiliates, and their sublicensees shall comply with all United States and foreign laws with respect to patent marking of Penn Licensed Products.

Patent Maintenance and Reimbursement. 6.1 Subject to this Article 6, PENN shall control, with input from ADEZA, controls the prosecution and maintenance of PENN PATENT RIGHTS. PENN's Patent Counsel shall be selected and agreed upon to the satisfaction of COMPANY must reimburse PENN and ADEZA. ADEZA shall be permitted to communicate directly with PENN's Patent Counsel to maintain and prosecute the PENN PATENT RIGHTS provided that ADEZA, PENN, and PENN's Patent Counsel shall copy one another on for all correspondence and documents pertaining to the PENN PATENT RIGHTS within the FIELD and THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. CONFIDENTIAL TREATMENT REQUESTED shall not file any document pertaining to the PENN PATENT RIGHTS within the FIELD with the U.S. or any other country patent office without PENN's prior review and approval. 6.2 ADEZA shall enter into a billing agreement, in form and substance reasonably satisfactory to PENN, ADEZA, and PENN's Patent Counsel with respect to all of the PENN PATENT RIGHTS within the FIELD, pursuant to which ADEZA shall agree to pay directly to such counsel on behalf of PENN such counsel's attorneys' documented attorneys fees, expenses, official fees and other charges incurred on or after the Execution of this Agreement and incident to the preparation, prosecution maintenance and licensing of PENN PATENT RIGHTS. Reimbursements shall be paid within thirty (30) days after COMPANY’S receipt of invoices for such fees, expenses and charges. For purposes of this Article 6, the word “maintenance” includes any interference negotiations, claims, or proceedings, in connection any forum, brought by Penn, Company, a third party, or the United States Patent and Trademark Office, and any requests by Penn or Company that the United States Patent and Trademark Office reexamine or reissue any patent in the Penn Patent Rights. Penn reserves the right to require the Company to provide a deposit in advance of incurring out of pocket patent expenses estimated by counsel to exceed $2,500. If Company fails to reimburse patent expenses under this Paragraph 6.1, or provide a requested deposit with respect to a Penn Patent Right, then ▇▇▇▇ will be free at its discretion and expense to either abandon such applications or patents related to such Penn Patent Right or to continue such preparation, prosecution and/or maintenance activities, and any patent rights associated with such patent action will be automatically excluded from the filing term “Penn Patent Rights” hereunder, on a patent by patent or country by country basis, as applicable. Advaxis/PENNpage 1 of 35 Amended and Restated Start-Up License Agreement 6.2 At or prior to the Execution of this Agreement, PENN will provide COMPANY a listing of monies owed for all historically accrued patent and licensing expenses, attorneys fees, official fees and all other charges incident to the preparation, prosecution of the patent applications and maintenance of PENN PATENT RIGHTS within the FIELD that PENN and ADEZA have mutually agreed to prosecute and maintain. PENN may at PENN's own expense continue to prosecute such claims that ADEZA does not decide to pursue. 6.3 PENN shall retain all right, title and interest in and to the PENN PATENT RIGHTS that were incurred and other intellectual property protection docketed by ▇▇▇▇ on or before the Execution date (the “Historic Patent Expenses”). Such reimbursement is currently due and owing, but the payment terms are hereby extended as follows. Effective ______________ and until paid in full, Company will pay interest at a rate equal to one and one-half percent [*] per month, or fraction thereof (or the maximum allowed by law, if less), on the unpaid balance of the Historic Patent Expenses. Payments will be applied first to accrued but unpaid interest until paid in full, with any remainder applied to the outstanding balance of Historic Patent Expenses. Upon the execution of this Agreement, COMPANY shall reimburse PENN no less than [*] of the Historic Patent Expenses. COMPANY shall reimburse a minimum of [*] of the Historic Patent Expenses (and accrued interest) within ninety [*] days after execution of this Agreement, another [*] of the Historic Patent Expenses (and accrued interest) [*] after execution of this Agreement and the remaining balance of the Historic Patent Expenses (and accrued interest) paid in full within [*] days after execution of this Agreement, except that Company shall make minimum payments toward Historic Patent Expenses and accrued interest in an amount equal to a minimum of [*], upon receipt of such proceeds. Notwithstanding anything herein to the contrary, Company shall pay the entire remaining balance of Historic Patent Expenses, including accrued interest, in full on or before [*]. In the event that COMPANY fails to make timely payment, the interest on any outstanding balance shall be increased to [*] per month, calculated from the original due date, until the balance is paid in full. The parties acknowledge that the PENN PATENT RIGHTS are being prosecuted in the United States and non-US jurisdictions and that US patent counsel works with foreign correspondents in each of these jurisdictions. This routinely causes delays in receipt of invoices, over which ▇▇▇▇ has no control. Regardless when received by PENN and/or forwarded to and/or received by COMPANY, COMPANY will remain liable for all fees, costs and expenses related thereto except those rights to prosecution of ADEZA pursuant the PENN PATENT RIGHTS for services performed, fees filed or incurred prior to termination of this AGREEMENTAgreement.

Patent Maintenance and Reimbursement. 6.1 PENN 7.1 Penn shall controlcontrol and diligently prosecute and maintain Penn Patent Rights. Penn and Targeted shall decide upon a mutually agreeable choice of patent counsel and a mutually agreeable budget for and course of prosecution, with input from ADEZA, the prosecution and maintenance of PENN PATENT RIGHTS. PENN's Patent Counsel Targeted shall be selected and agreed upon to the satisfaction of PENN and ADEZA. ADEZA shall be permitted to communicate directly with PENN's Patent Counsel to maintain and prosecute the PENN PATENT RIGHTS provided that ADEZA, PENN, and PENN's Patent Counsel shall copy one another copied on all substantive correspondence and documents pertaining regarding such Penn Patent Rights. The parties acknowledge that neither of them currently has an intention to terminate or substantially reduce the PENN PATENT RIGHTS within the FIELD and THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. CONFIDENTIAL TREATMENT REQUESTED shall not file any document pertaining to the PENN PATENT RIGHTS within the FIELD with the U.S. or any other country patent office without PENN's prior review and approval. 6.2 ADEZA shall enter into a billing agreement, in form and substance reasonably satisfactory to PENN, ADEZA, and PENN's Patent Counsel with respect to all scope of the PENN PATENT RIGHTS engagement of the patent counsel used for such purposes by Penn prior to and as of the Effective Date. Subject to Sections 7.2 and 7.3, Targeted shall pay, or shall reimburse Penn within the FIELDsixty (60) days of receipt of invoice for, pursuant to which ADEZA shall agree to pay directly to such counsel on behalf of PENN such counsel's all documented third party attorneys' ’ fees, expenses, official fees and other charges in connection with incident to the filing and prosecution of the patent applications preparation, prosecution, licensing and maintenance of PENN PATENT RIGHTS within Penn Patent Rights, including interferences, oppositions, etc. brought or defended in accordance with the FIELD that PENN and ADEZA have mutually agreed budget for and course of prosecution. Penn shall provide Targeted with itemized statements reflecting these expenses quarterly. In the event that Penn should decide not to file, prosecute or maintain applications and maintain. PENN may patents for such Penn Patent Rights, Targeted shall have the opportunity to do so at PENN's own expense continue to prosecute such claims that ADEZA does not decide to pursueTargeted’s sole expense. 6.3 PENN shall retain all right7.2 Except with respect to licenses granted by Penn to [*] pursuant to Section 2.2.2, title and interest in and if Penn at any time prior to or after the PENN PATENT RIGHTS and other intellectual property protection related thereto except those Effective Date grants or has granted any rights or licenses to or for the benefit of any Non-Targeted Party under any of the Penn Patent Rights, i.e., where it may do so outside the scope of the exclusive rights of ADEZA pursuant Targeted or the Covered Affiliates hereunder, Penn shall [*]. 7.3 If Targeted elects to discontinue payment for the filing, prosecution, and/or maintenance of any patent application and/or patent contained in the Penn Patent Rights (or with respect to any particular claims therein), it shall so notify Penn, and any such patent application or patent (or such claims, as applicable) shall thereupon be excluded from the definition of Penn Patent Rights and from the scope of the licenses granted under this AGREEMENTAgreement, and all rights relating thereto shall revert to Penn and may be freely used or licensed by Penn. 7.4 Targeted, the Covered Affiliates, and their sublicensees shall comply with all United States and foreign laws with respect to patent marking of Penn Licensed Products.