Common use of Patent Matters Clause in Contracts

Patent Matters. 19.1 ABI will, in a scientifically and commercially reasonable manner, file and prosecute patent applications and maintain patents in the Territory relating to the Technology, the ABI Owned Developments and any improvements made by or on behalf of ABI ("ABI Developments"). ---------------- 19.2 APP will not attempt to file or prosecute any patent applications or maintain any patent covering the Technology, the ABI Developments, or the ABI Owned Developments except: (i) as ABI may, in its sole discretion, approve in writing; (ii) in the event ABI elects to discontinue or abandon the prosecution and/or maintenance of any patent or patent application covering the Technology in the Territory, it shall provide adequate notice to APP and shall give APP the opportunity to file, continue prosecution of, pay any issuance fee and/or maintain such patent application and/or patent at APP's own expense. 19.3 APP may take whatever steps it deems necessary to protect and enforce its rights and interest in APP Owned Developments. ABI will not attempt to file or prosecute any patent applications or maintain any patent covering the APP Owned Developments. 19.4 If either Party becomes aware of any Product or activity of any third party that involves or may involve infringement or other violation of any patent relating to the Proprietary Information, APP Owned Developments (to the extent related to the Product), ABI Owned Developments, ABI Developments or other Proprietary Right in the Territory, that Party must promptly notify the other Party in writing of the infringement or violation. 19.5 ABI will have the first right, but not the obligation, to file suit or take other action to prevent the infringement of any patents or Technology owned by ABI related to the Product in the Territory. If ABI takes such action, ABI will control any action undertaken by ABI against an infringer, and ABI may enter into settlements, stipulated judgments or other arrangements respecting the infringement, at its own expense unless the proposed settlements, judgments or arrangements would adversely affect APP, in which case, they will be subject to APP's consent which will not be unreasonably withheld. If ABI takes such action, ABI will defend, indemnify and hold APP harmless from related costs and expenses for such claimed infringement. APP will permit an action to be brought by ABI in APP's name if required by law. APP agrees to provide all assistance that ABI may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which ABI will pay APP a reasonable hourly rate of compensation, together with reimbursement for out-of-pocket costs. Any damages or other recovery from an infringement action undertaken by ABI pursuant to this Section 19.5 to enforce ABI's ------------ Proprietary Rights relating to the Product sold in the Territory, will be used first to reimburse ABI's legal costs and expenses incurred in the action and thereafter any damages or other recovery relating to Products sold by the APP Parties in the Territory will be shared equally with APP. 19.6 If ABI does not, within 90 days after receipt of notice of a patent infringement relating to the use of the Product sold by the APP Parties in the Territory, commence action directed toward restraining or enjoining such patent infringement, APP may take such legally permissible action as it deems necessary or appropriate to enforce ABI's patent rights and restrain such infringement at its own expense unless the actions would adversely affect ABI, in which case they will be subject to ABI's consent which will not be unreasonably withheld. If APP takes such action, APP will indemnify, defend and hold harmless ABI in respect of any such action. Any damages or other recovery from an infringement action undertaken by APP pursuant to this Section 19.6 to ------------ enforce ABI Proprietary Rights on the Product sold in the Territory, will be first used to reimburse APP's legal costs and expenses incurred in such action and thereafter shared equally with ABI; provided if any portion of such damages or other recovery relate to infringement outside the Territory or Product not sold by the APP Parties in the Territory, such portion shall be paid 100% to ABI. 19.7 Each Party must fully cooperate with the other Party bringing any action, including joining as a Party to the suit, if necessary, and also including, without limitation, supplying essential documentary evidence and making essential witnesses then in its employ available. 19.8 If any third party threatens or commences a lawsuit against either Party alleging the Product in any way infringes or otherwise violates any Proprietary Rights of such third party, it shall promptly notify the other Party in writing.

Patent Matters. 19.1 ABI will, in a scientifically and commercially reasonable manner, file and prosecute patent applications and maintain patents in (a) As of the Territory relating to the Technology, the ABI Owned Developments and any improvements made by or on behalf of ABI ("ABI Developments"). ----------------Effective Date: 19.2 APP will not attempt to file or prosecute any patent applications or maintain any patent covering the Technology, the ABI Developments, or the ABI Owned Developments except: (i) SANGAMO warrants and represents that, except as ABI maySANGAMO otherwise has advised BAXTER in writing prior to the Effective Date, in its sole discretionit has not received written notice from any Third Party that any composition, approve in writing; process or use claimed by the Patent Rights infringes an issued patent of such Third Party; (ii) SANGAMO warrants and represents that (A) it has conducted searches of public databases for issued patents and published Third Party patent applications that contain the words "zinc finger" or "nucleic acid binding proteins" in the event ABI elects title or abstract, and (B) that it has disclosed to discontinue BAXTER all issued patents and published Third Party patent applications that have been disclosed to SANGAMO in the results of such searches. (iii) SANGAMO warrants and represents that it has no actual knowledge (without any duty of inquiry) of any current action conducted by a Third Party which is or abandon would constitute an infringement of the prosecution and/or maintenance Patent Rights in the Field; (iv) BAXTER has had the opportunity to review such materials and to ask such questions of SANGAMO and its advisors, as BAXT▇▇ ▇▇▇▇▇ ▇▇▇essary or appropriate, regarding the Patent Rights. SANGAMO warrants and represents that such materials provided to BAXTER and responses to such inquiries did not contain any untrue statement of a (v) SANGAMO warrants and represents that it has reviewed its intellectual property portfolio and believes that there are no other patents or patent applications owned by SANGAMO or licensed to SANGAMO with the right to grant sublicenses which would be infringed in the practice of the Patent Rights in the Field in the Territory. Should it later eventuate that any patent or patent application covering application, that as of the Technology Effective Date is owned by SANGAMO or licensed to SANGAMO with the right to grant sublicenses, would be infringed in the practice of the Patent Rights in the Field in the Territory, it shall provide adequate notice to APP and shall give APP the opportunity to file, continue prosecution of, pay any issuance fee and/or maintain such then that patent or patent application and/or patent at APP's own expense. 19.3 APP may take whatever steps it deems necessary shall be deemed to protect and enforce its rights and interest in APP Owned Developments. ABI will not attempt be licensed to file or prosecute any patent applications or maintain any patent covering BAXT▇▇ ▇▇ part of the APP Owned Developments. 19.4 If either Party becomes aware of any Product or activity of any third party that involves or may involve infringement or other violation of any patent relating to the Proprietary Information, APP Owned Developments (Patent Rights under this Agreement but only to the extent related necessary for BAXTER to exercise the Product), ABI Owned Developments, ABI Developments or other Proprietary Right in the Territory, that Party must promptly notify the other Party in writing of the infringement or violationlicense rights granted to it under this Agreement. 19.5 ABI will have the first right, but not the obligation, to file suit or take other action to prevent the infringement of any patents or Technology owned by ABI related to the Product in the Territory. If ABI takes such action, ABI will control any action undertaken by ABI against an infringer, and ABI may enter into settlements, stipulated judgments or other arrangements respecting the infringement, at its own expense unless the proposed settlements, judgments or arrangements would adversely affect APP, in which case, they will be subject to APP's consent which will not be unreasonably withheld. If ABI takes such action, ABI will defend, indemnify and hold APP harmless from related costs and expenses for such claimed infringement. APP will permit an action to be brought by ABI in APP's name if required by law. APP agrees to provide all assistance that ABI may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which ABI will pay APP a reasonable hourly rate of compensation, together with reimbursement for out-of-pocket costs. Any damages or other recovery from an infringement action undertaken by ABI pursuant to this Section 19.5 to enforce ABI's ------------ Proprietary Rights relating to the Product sold in the Territory, will be used first to reimburse ABI's legal costs and expenses incurred in the action and thereafter any damages or other recovery relating to Products sold by the APP Parties in the Territory will be shared equally with APP. 19.6 If ABI does not, within 90 days after receipt of notice of a patent infringement relating to the use of the Product sold by the APP Parties in the Territory, commence action directed toward restraining or enjoining such patent infringement, APP may take such legally permissible action as it deems necessary or appropriate to enforce ABI's patent rights and restrain such infringement at its own expense unless the actions would adversely affect ABI, in which case they will be subject to ABI's consent which will not be unreasonably withheld. If APP takes such action, APP will indemnify, defend and hold harmless ABI in respect of any such action. Any damages or other recovery from an infringement action undertaken by APP pursuant to this Section 19.6 to ------------ enforce ABI Proprietary Rights on the Product sold in the Territory, will be first used to reimburse APP's legal costs and expenses incurred in such action and thereafter shared equally with ABI; provided if any portion of such damages or other recovery relate to infringement outside the Territory or Product not sold by the APP Parties in the Territory, such portion shall be paid 100% to ABI. 19.7 Each Party must fully cooperate with the other Party bringing any action, including joining as a Party to the suit, if necessary, and also including, without limitation, supplying essential documentary evidence and making essential witnesses then in its employ available. 19.8 If any third party threatens or commences a lawsuit against either Party alleging the Product in any way infringes or otherwise violates any Proprietary Rights of such third party, it shall promptly notify the other Party in writing.

Patent Matters. 19.1 ABI willParagraph 5.2 (b) shall be deleted in its entirety and replaced with the following: LICENSEE may request that the UNIVERSITY take legal action against the infringement of University’s Patent Rights. Such request must be in writing and must include reasonable evidence of infringement and damages to LICENSEE. If the infringing activity has not abated within ninety (90) days following the effective date of request, in a scientifically and commercially reasonable manner, file and prosecute patent applications and maintain patents in then the Territory relating to the Technology, the ABI Owned Developments and any improvements made by or on behalf of ABI ("ABI Developments"). ---------------- 19.2 APP will not attempt to file or prosecute any patent applications or maintain any patent covering the Technology, the ABI Developments, UNIVERSITY or the ABI Owned Developments exceptU.S. Government has the right to: the UNIVERSITY shall give notice of its election in writing to LICENSEE by the end of the one-hundredth (i100th) as ABI mayday after receiving notice of written request from LICENSEE; provided, in its sole discretionhowever, approve in writing; (ii) in the event ABI elects to discontinue or abandon of a litigation commenced under the prosecution and/or maintenance of any patent or patent application covering the Technology in the Territory▇▇▇▇▇-▇▇▇▇▇▇ Act, it shall provide adequate notice to APP and UNIVERSITY shall give APP the opportunity to file, continue prosecution of, pay any issuance fee and/or maintain such patent application and/or patent at APP's own expense. 19.3 APP may take whatever steps it deems necessary to protect and enforce notice of its rights and interest in APP Owned Developments. ABI will not attempt to file or prosecute any patent applications or maintain any patent covering the APP Owned Developments. 19.4 If either Party becomes aware of any Product or activity of any third party that involves or may involve infringement or other violation of any patent relating to the Proprietary Information, APP Owned Developments (to the extent related to the Product), ABI Owned Developments, ABI Developments or other Proprietary Right in the Territory, that Party must promptly notify the other Party election in writing to LICENSEE by the end of the infringement or violation. 19.5 ABI will have the first right, but not the obligation, to file thirtieth (30th) day after receiving notice of written request from LICENSEE. LICENSEE may thereafter bring suit or take other action to prevent the infringement of any patents or Technology owned by ABI related to the Product in the Territory. If ABI takes such action, ABI will control any action undertaken by ABI against an infringer, and ABI may enter into settlements, stipulated judgments or other arrangements respecting the for patent infringement, at its own expense unless expense, if and only if the proposed settlementsUNIVERSITY and the U.S. Government elect not to commence suit and if the infringement occurred during the period and in a jurisdiction where LICENSEE had exclusive rights under this Agreement. If, judgments however, LICENSEE elects to bring suit in accordance with this Paragraph 5.2, then the UNIVERSITY or arrangements would adversely affect APPthe U.S. Government may thereafter join that suit at its own expense. LICENSEE agrees not to bring suit for patent infringement without following the procedures of this Paragraph, in which case, they will be subject to APP's consent which will not be unreasonably withheld. If ABI takes such action, ABI will defend, indemnify and hold APP harmless from related costs and expenses for such claimed infringement. APP will permit an action both parties agree to be brought by ABI in APP's name if required by law. APP agrees to provide all assistance that ABI may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which ABI will pay APP a reasonable hourly rate of compensation, together with reimbursement for out-of-pocket costs. Any damages or other recovery from an infringement action undertaken by ABI pursuant to this Section 19.5 to enforce ABI's ------------ Proprietary Rights relating to the Product sold in the Territory, will be used first to reimburse ABI's legal costs and expenses incurred in the action and thereafter any damages or other recovery relating to Products sold bound by the APP Parties in the Territory will be shared equally with APP. 19.6 If ABI does not, within 90 days after receipt of notice outcome of a patent infringement relating to the use of the Product sold by the APP Parties in the Territory, commence action directed toward restraining or enjoining such suit for patent infringement, APP may take patent infringement issues and patent infringement defenses raised through the pendency of such legally permissible action as it deems necessary or appropriate to enforce ABI's patent rights a suit under this Paragraph 5.2 (b). All other terms and restrain such infringement at its own expense unless the actions would adversely affect ABI, in which case they will be subject to ABI's consent which will not be unreasonably withheld. If APP takes such action, APP will indemnify, defend and hold harmless ABI in respect of any such action. Any damages or other recovery from an infringement action undertaken by APP pursuant to this Section 19.6 to ------------ enforce ABI Proprietary Rights on the Product sold conditions in the TerritoryLicense Agreement between OTONOMY and UNIVERSITY, will effective November 5, 2008 and amended in Amendment No. 1, effective January 27, 2010, shall remain unchanged and in effect. *** Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. The parties agree that this Amendment No. 2 may be first used to reimburse APP's legal costs executed by facsimile and expenses incurred in such action and thereafter shared equally with ABI; provided if any portion two (2) or more counterparts each of such damages or other recovery relate to infringement outside the Territory or Product not sold by the APP Parties in the Territory, such portion which shall be paid 100% to ABI. 19.7 Each Party must fully cooperate with deemed an original and all of which together shall constitute but one and the other Party bringing any actionsame instrument. OTONOMY, including joining as a Party INC. THE REGENTS OF THE UNIVERSITY OF CALIFORNIA By: /s/ ▇▇▇ ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇, Ph.D. Name: ▇▇▇ ▇▇▇▇▇▇▇ Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇, Ph.D. Title: CEO Title: Assistant Vice Chancellor Date: June 9, 2010 Date: 6/9/10 This amendment to the suitagreement (“Amendment No. 3”) is made by and between Otonomy, if necessaryInc., a Delaware corporation having an address at ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ Drive, Suite 100, San Diego, California 92121 (“Otonomy”) and also includingThe Regents of the University of California, without limitationa California corporation having its statewide administrative offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, supplying essential documentary evidence and making essential witnesses then in ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ (“UNIVERSITY”), as represented by its employ availableSan Diego campus having an address at University of California, San Diego, Technology Transfer Office, Mail Code 0910, ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, La Jolla, California 92093-0910 (“UCSD”). Amendment No. 3 is effective as of the date of the last signature below (“Amendment No. 3 Effective Date”). 19.8 If any third party threatens or commences a lawsuit against either Party alleging the Product in any way infringes or otherwise violates any Proprietary Rights of such third party, it shall promptly notify the other Party in writing.

Patent Matters. 19.1 ABI will, in a scientifically and commercially reasonable manner, file and prosecute patent applications and maintain patents in the Territory relating to the Technology, including conducting interferences, re-examinations, reissues and oppositions, if any, (collectively, the ABI Owned Developments and any improvements made by or on behalf of ABI ("ABI Developments"“Prosecution”). ----------------ABI shall keep Taiho informed as to such Prosecution, including providing Taiho drafts of patent applications, responses and other filings in advance of their submission to the respective patent offices, and providing Taiho copies of any correspondence with or notices from the patent offices. ABI shall duly consider any reasonable comments provided by Taiho with respect to such Prosecution. In the event ABI desires to abandon its efforts to prosecute or maintain any such patents and patent applications in the Territory, it shall notify Taiho at least sixty (60) days prior to any required action (or such shorter period as is reasonably practicable for non-extendable deadlines). In such event, Taiho shall have the right, but not the obligation, to Prosecute such patents and patent applications, in its discretion and at its sole cost and expense. 19.2 APP Except as set forth in Section 19.1, Taiho will not attempt to file or prosecute any patent applications or maintain any patent covering the Technology, on inventions made by the ABI Developments, or Parties that are within the ABI Owned Developments except: (i) Technology except as ABI may, in its sole discretion, approve in writing; (ii) in the event ABI elects to discontinue or abandon the prosecution and/or maintenance of any patent or patent application covering the Technology in the Territory, it shall provide adequate notice to APP and shall give APP the opportunity to file, continue prosecution of, pay any issuance fee and/or maintain such patent application and/or patent at APP's own expense. 19.3 APP may take whatever steps it deems necessary to protect and enforce its rights and interest in APP Owned Developments. ABI will not attempt to file or prosecute any patent applications or maintain any patent covering the APP Owned Developments. 19.4 If either Party becomes aware of any Product or activity of any third party that involves or may involve infringement or other violation of any patent relating to the patents, Proprietary Information, APP Owned Developments (to the extent related to Technology, the Product), ABI Owned Developments, ABI Developments Brand Names or other Proprietary Right relating to the Product in the Territory, that Party must promptly notify the other Party in writing of the infringement or violation. 19.5 19.4 ABI will have the first right, but not the obligation, to file suit or take other action to prevent the infringement in the Territory of any patents patents, Proprietary Information, Technology, ABI Brand Names or Technology other Proprietary Right relating to the Product, owned by ABI related to the Product in the TerritoryABI. If ABI takes such action, ABI will control any action undertaken by ABI against an infringer, and ABI may enter into settlements, stipulated judgments or other arrangements respecting the infringement, at its own expense unless the proposed settlements, judgments or arrangements would adversely affect APPTaiho, in which case, they will be subject to APP's Taiho’s consent which will not be unreasonably withheld. If ABI takes such action, ABI will defend, indemnify and hold APP Taiho harmless from related costs and expenses for such claimed infringement. APP Taiho will permit such an action to be brought by ABI in APP's Taiho’s name if required by law. APP Taiho agrees to provide all assistance that ABI may reasonably require in any litigation, including providing written evidence, deposition and trial testimony, for which ABI will pay APP Taiho a reasonable hourly rate of compensation, together with reimbursement for out-of-pocket costs. Any damages or other recovery from an infringement action undertaken by ABI pursuant to this Section 19.5 to enforce ABI's ------------ Proprietary Rights relating to the Product sold in the Territory19.4, will be used first to reimburse ABI's ’s legal costs and expenses incurred in the action and thereafter any damages or other recovery relating to Products sold by the APP Parties infringing products in the Territory will be shared equally with APPTaiho, provided that Taiho shall not be entitled to more than its actual damages. 19.6 19.5 If ABI does not, within 90 days after receipt of notice of: (A) an infringement of a patent infringement included within the Technology relating to the use of the Product sold by the APP Taiho Parties in the Territory, including infringement of such patents by a Similar Compound, or (B) an infringement of the ABI Brand Names used with the Product in the Territory (each, a “Subject Infringement”), commence action directed toward restraining or enjoining such patent infringementSubject Infringement, APP Taiho may take such legally permissible action as it deems necessary or appropriate to enforce ABI's ’s patent rights and ABI Brand Names and restrain or enjoin such infringement at its own expense unless the actions would adversely affect ABIABI in an unfair way, in which case they will be subject to ABI's ’s consent which will not be unreasonably withheld. If APP Taiho takes such action, APP Taiho will indemnify, defend and hold harmless ABI in respect of any such action. Any damages or other recovery from an infringement action undertaken by APP Taiho pursuant to this Section 19.6 to ------------ enforce ABI Proprietary Rights on the Product sold in the Territory, 19.5 against any Subject Infringement will be first used to reimburse APP's Taiho’s legal costs and expenses incurred in such action and thereafter shared equally with ABI; provided if any portion of such damages or other recovery (1) relate to infringement outside the Territory or Product (2) in the case of an infringement as described in clause (A) above, do not sold by the APP Parties relate to an infringing product in the Territory, such portion shall be paid 100% to ABI. 19.7 19.6 Each Party must fully cooperate with the other Party bringing any actionaction pursuant to this Section 19, including joining as a Party to the suit, if necessary, and also including, without limitation, supplying essential documentary evidence and making essential witnesses then in its employ available. 19.8 19.7 If any third party threatens or commences a lawsuit against either Party alleging the Product in any way infringes or otherwise violates any Proprietary Rights of such third party, it shall promptly notify the other Party in writing.