Common use of Patents and Infringement Clause in Contracts

Patents and Infringement. 6.1 Pursuant to this Licensing Agreement, Licensor grants Licensee the right to further develop the licensed patents and trademarks as set forth in Schedule A. 6.2 At all times, unless modified by all of the parties hereto, Licensor agrees to pay all costs incident to the patents for the Subject Technology and like protection in all jurisdictions where the patents are filed, including all costs incurred for filing, prosecution, issuance and maintenance fees, as well as any costs incurred in filling continuations, continuations-in-part, divisions or related applications, and any re-examination or reissue proceedings. Licensor agrees to keep Licensee fully informed, at Licensors' expense, of prosecutions and maintenance pursuant to paragraph 6.2, including submitting to Licensee copies of all official actions and responses thereto; provided that, however, Licensee shall be responsible for any of its expenses including attorney's fees that Licensee incurs in reviewing and commenting on the information it received from the Licensors. Licensors shall consult Licensee regarding any abandonment of the prosecution or maintenance of the patents for the Subject Technology and shall abstain from abandoning any prosecution or maintenance of such patents without Licensee’s written consent. 6.3 In the event that Licensee decides to prosecute a patent application for any new technology developed from the Subject Technology in any jurisdiction, Licensee shall timely notify Licensor the status of such applications. If Licensee fails to notify Licensor in sufficient time, such failure shall not be considered a default event of this Licensing Agreement. Licensor agrees to reasonably cooperate with Licensee to whatever extent is reasonably necessary to procure patent protection and prosecution of any technology newly developed from the Subject Technology. 6.4 Each Party shall promptly inform the other of any suspected infringement of any claims with respect to the patents for Subject Technology, as well as the misuse, misappropriation, theft, or breach of confidence of other proprietary rights in the Subject Technology by a third party. With respect to such activities as are suspected, Licensee shall have the right, but not the obligation, to institute an action for infringement, misuse, misappropriation, theft, or breach of confidence of the proprietary rights against such third party. If Licensee fails to bring such an action or proceeding within a period of one (1) month after receiving notice or otherwise having knowledge of such infringement, then Licensor shall have the right, but not the obligation, to prosecute at its own expense any such claim. Should either Licensor or Licensee commence suit under the provisions of this Paragraph 6.4 and thereafter elect to abandon the same, it shall give timely notice to the other Party who may, if it so desires, continue prosecution of such action or proceeding. All recoveries, whether by judgment, award, decree, or settlement from infringement or misuse of Subject Technology, shall be apportioned as follows: the Party bringing the action or proceeding shall first recover an amount equal to two (2) times the costs and expenses incurred by such Party directly related to the prosecution of such action or proceeding and the remainder shall be divided equally between Licensee and both of Licensors. 6.5 Neither Licensor nor Licensee shall settle any action covered by Paragraph 6.4 without first obtaining the consent of the other Party, where consent will not be unreasonably withheld.

Patents and Infringement. 6.1 Pursuant (a) NEWCO shall continue at NEWCO's expense, except as otherwise provided herein, the efforts of HARVARD and/or ION commenced prior to the Sub-License Agreement Date to obtain patents (or reissues, renewals, divisions, extensions or continuations thereof) on the applications in the United States and on any issued patents and patent applications in such foreign countries as are the subject of foreign counterpart prosecution on the Sub-License Agreement Date. NEWCO and ION may jointly elect to file and obtain patent and other suitable forms of protection of the Sublicensed Technology in any country at NEWCO's expense. (b) In the event that NEWCO elects not to pay or to cease paying for prosecution and maintenance associated with any of the Harvard Patent Rights, then such patent, patent application, or patent issuing therefrom shall not be included as part of the sub-license rights granted to NEWCO pursuant to this Licensing Sub-License Agreement and NEWCO shall assign its ownership interest in any such patent or patent application in Patent Rights to ION. NEWCO agrees to execute whatever formal assignment documents are required to assign such patent or patent application in Patent Rights back to ION. In the event that NEWCO fails to pay for prosecution costs associated with activities that have been jointly agreed to in Paragraph 6.1 of this Sub-License Agreement, Licensor grants Licensee ION may within seven days written notice to NEWCO, pay the right amounts and NEWCO shall be liable to further develop pay ION for the licensed patents and trademarks as set forth in Schedule A. 6.2 At all times, unless modified by all prosecution costs. In the event NEWCO fails to provide evidence to ION of payment of maintenance costs associated with any of the parties heretoHarvard Patent Rights which have been jointly agreed to in Paragraph 6.1 of this Sub-license Agreement prior to sixty (60) days in advance of a deadline upon which intellectual property rights would be irretrievably lost, Licensor agrees ION may within seven (7) days written notice to NEWCO, pay the amounts and NEWCO shall be liable to pay all costs incident to the patents ION for the Subject Technology maintenance costs. (c) The decision with regard to selection of patent counsel and like protection in all jurisdictions where the patents are filed, including all costs incurred for any decisions with respect to filing, prosecution, issuance and maintenance fees, as well as of any costs incurred in filling continuations, continuations-in-part, divisions or related applications, patent applications and any re-examination or reissue proceedingspatents relating to the Sublicensed Technology shall be made jointly by NEWCO and ION. Licensor agrees to keep Licensee fully informed, at Licensors' expense, of prosecutions Both NEWCO and maintenance pursuant to paragraph 6.2, including submitting to Licensee ION must simultaneously receive copies of all official actions correspondence, draft responses and responses thereto; provided thatfilings for each party's review and approval. (d) ION shall cooperate fully with NEWCO, however, Licensee shall be responsible for any of its expenses including attorney's fees that Licensee incurs in reviewing and commenting on the information it received from the Licensors. Licensors shall consult Licensee regarding any abandonment of the prosecution or maintenance of the patents for the Subject Technology and shall abstain from abandoning any prosecution or maintenance endeavor to secure the cooperation of such patents without Licensee’s written consent. 6.3 In the event that Licensee decides to prosecute a patent application for any new technology developed from the Subject Technology HARVARD in any jurisdictionpreparation, Licensee shall timely notify Licensor the status of such applications. If Licensee fails to notify Licensor in sufficient timefiling, such failure shall not be considered a default event of this Licensing Agreement. Licensor agrees to reasonably cooperate with Licensee to whatever extent is reasonably necessary to procure patent protection and prosecution of all United States and foreign patent applications filed pursuant to this paragraph 6.1, which cooperation shall include, but not be limited to, execution by HARVARD, ION, HARVARD's faculty, and all employees of both HARVARD and ION of any technology newly developed from the Subject Technologyand all such papers and instruments as are necessary or helpful to NEWCO or its sub-licensees in preparing, filing, and prosecuting all foreign patent applications. 6.4 Each Party shall promptly inform the other of any suspected infringement of any claims with respect to the patents for Subject Technology, as well as the misuse, misappropriation, theft, or breach of confidence of other proprietary 6.2 If it is believed in good faith that patent rights in the Subject Technology are infringed by a third party, the party to this Sub-License Agreement first having knowledge of such infringement shall promptly notify the other in writing, which notice shall set forth the facts of such infringement in reasonable detail. With respect to such activities as are suspected, Licensee NEWCO shall have the right, but not the obligation, to institute an action for infringement, misuse, misappropriation, theft, or breach of confidence and prosecute at its own expense any such infringement of the proprietary patent rights against such third partyprovided that NEWCO shall not enter into any settlement agreement or consent judgment without the prior written consent of ION, which shall not be unreasonably withheld. If Licensee ION is deemed to be an indispensable party, ION agrees to be named as a co-Plaintiff. If HARVARD is deemed to be an indispensable party, then ION shall endeavor to secure HARVARD's agreement to be named as co-Plaintiff. If NEWCO fails to bring such an action or proceeding proceedings within a period of one three (13) month months after receiving written notice or otherwise having knowledge of the infringement or within such infringementtime that it intends not to bring such action, then Licensor ION shall have the right, but not the obligation, to prosecute at its their own expense any infringement of the patent rights. Recoveries or reimbursements from such claimaction shall first be applied to reimburse NEWCO and ION for litigation costs. Should either Licensor Any remaining recoveries or Licensee commence suit under the provisions reimbursements shall be shared equally by NEWCO and ION, after payment of this Paragraph 6.4 and thereafter elect any amounts due to abandon the same, it shall give timely notice HARVARD pursuant to the other Party who may, if it so desires, continue prosecution of such action or proceedingHARVARD/ION License Agreement. All recoveries, whether by judgment, award, decree, or settlement from infringement or misuse of Subject Technology, shall be apportioned as follows: the Party bringing the action or proceeding shall first recover an amount equal A party choosing not to two (2) times the costs and expenses incurred by such Party directly related to the prosecution of participate in any such action or proceeding and shall, at the remainder shall be divided equally between Licensee and both of Licensors. 6.5 Neither Licensor nor Licensee shall settle any action covered by Paragraph 6.4 without first obtaining the consent request of the other Partyparty, where make its employees available to testify, and produce relevant non-privileged records, papers, information, samples, specimens, and the like. NEWCO shall reimburse ION for any costs ION and Harvard incur as part of an action brought by NEWCO or its sublicensees or Affiliates, irrespective of whether ION or HARVARD become co-plaintiffs. If HARVARD elects not to participate, ION shall endeavor to secure HARVARD's consent will not to make its employees available to testify, and produce relevant non-privileged records, papers, information, samples, specimens, and the like. 6.3 NEWCO shall defend, indemnify and hold harmless ION and HARVARD with respect to costs of defense and any and all liabilities resulting from any suits, countersuits or legal actions of any nature that may be unreasonably withheldasserted against ION or HARVARD in response to the filing of an action by NEWCO pursuant to Paragraph 6.2 or as the result of the filing of an action against NEWCO by a third party. ION shall, at the request and expense of NEWCO, cooperate with NEWCO in any such third party action by making its employees available to testify and by producing relevant, non-privileged records, papers, information, samples, specimens, and the like, and ION shall endeavor to obtain the same cooperation from HARVARD, if NEWCO deems it necessary.