Common use of Prosecution and Maintenance of New R&D Patents Clause in Contracts

Prosecution and Maintenance of New R&D Patents. (i) To the extent that a party desires to file an application for a patent claiming or describing a New R&D Invention, the party seeking to file the application shall inform the other party of its desire to file for patent protection and submit a request to the R&D Committee for permission to file the application for such invention. If a majority of the R&D Committee members are unable to agree on whether to pursue patent protection at all or in any particular jurisdiction, the matter shall be referred to the Committee, which shall make a final determination whether to file the application. In the event that the R&D Committee or the Committee, as the case may be, decides to pursue patent protection for a particular invention in one or more jurisdictions, the R&D Committee or the Committee, as the case may be, shall, designate the party with the most knowledge of the New R&D Invention (as determined by the unanimous agreement of the R&D Committee or the Committee, as the case may be) as the lead party (“Lead Party”) who will take primary responsibility for the preparation, filing, prosecution, and maintenance of any patents related to such New R&D Invention (“Patent Protection Process”). The non-lead party shall provide all reasonable cooperation and assistance in connection with the Patent Protection Process. The Lead Party will ensure that the non-lead party is kept informed of the status of and has an opportunity to review and comment on all aspects of the Patent Protection Process, including, but not limited to, copying the non-lead party on all patent related communications such as patent applications, office actions, and responses and allowing the non-lead party ten (10) business days to review and comment upon the specifications, claims, and responses to office actions prior to their submission to the appropriate patent office. The Lead Party shall use all reasonable efforts to incorporate and address the non-lead party’s comments. Notwithstanding the foregoing, final decisions regarding the specification claims and responses to office actions shall be made by the Lead Party. The applications shall be prepared, filed and prosecuted, and maintenance fees paid through an attorney or agent chosen by the Lead Party. Except as set forth in Section 7.3(a)(iii) below, each party shall pay fifty percent (50%) of all expenses incurred hereafter pursuant to the Patent Protection Process (“Patent Expenses”) according to the following procedure. On a quarterly basis the Lead Party will provide the non-lead party with an invoice for Patent Expenses reporting the amount of Patent Expenses incurred, the purpose of incurring such Patent Expenses, and the amount of Patent Expenses owed by the non-lead party. The non-lead party will reimburse on a quarterly basis the Lead Party within thirty (30) days of receiving an invoice for Patent Expenses from the Lead Party. If the Lead Party anticipates extraordinary expenses arising from the Patent Protection Process, then the Lead Party will provide the non-lead party with full details and together the parties will determine a mutually acceptable course of action prior to incurring such expenditures. Both parties recognize that one party may incur certain legal expenses regarding the New R&D Invention and/or patent rights relating to matters pertaining solely to such party, and, in such circumstances, such expenses will not be considered Patent Expenses, unless otherwise decided by the Committee. The Lead Party will maintain adequate records showing all Patent Expenses incurred, which will be made available to the non-lead party upon reasonable notice. (ii) Notwithstanding Section 8.5 or Section 8.6, in the event that the Committee is deadlocked on whether to file a patent application for a particular invention in one or more jurisdictions (i.e., where half of the Committee members are in favor of pursuing patent protection and half the Committee members are opposed), the party whose Committee members voted in favor of pursuing patent protection (the “Patent Proponent Party”) shall have the right to independently file a patent application covering such invention at its own costs and expense, and the other party shall provide all reasonable cooperation and assistance in connection therewith, including without limitation, ensuring that any of its employees who may be inventors under such patent application shall be joined as inventors thereto, and shall cause such employees to assign in writing their entire interest in such invention to the Patent Proponent Party. In such event, the patent shall be treated as an Improvement made by the Patent Proponent Party and shall be subject to the license provisions of Section 7.4(d). Notwithstanding the foregoing, any decisions by the Patent Proponent Party regarding whether to pursue patent protection or the scope of the applicable patent claims being sought shall take into consideration the legal and commercial interests of the other party, including without limitation the other party’s interest in avoiding disclosure of confidential information or technology in connection with its activities in their respective A▇▇ ▇▇▇▇▇▇ of Use. (iii) If, in one or more countries, (A) the Lead Party shall at any time decide not to prepare, file, prosecute or maintain any such patent application for any such New R&D Invention or (B) either party does not pay its share of the expenses related to the foregoing matters (in either situation, the “Declining Party”), the other party may, at its own expense, prepare, file, prosecute or maintain any such patent application in such country or countries. In such event, the Declining Party hereby assigns its interest in and to the New R&D Invention (but only with respect to such country or countries as applicable) underlying such patent application, and such application in such country or countries to the other party and such party hereby grants the Declining Party a license to use such patents in accordance with the parties’ respective rights in Sections 7.4(a) and 7.4(b).

Prosecution and Maintenance of New R&D Patents. (i) To the extent that a party desires to file an application for a patent claiming or describing a New R&D Invention, the party seeking to file the application shall inform the other party of its desire to file for patent protection and submit a request to the R&D Committee for permission to file the application for such invention. If a majority of the R&D Committee members are unable to agree on whether to pursue patent protection at all or in any particular jurisdiction, the matter shall be referred to the Committee, which shall make a final determination whether to file the application. In the event that the R&D Committee or the Committee, as the case may be, decides to pursue patent protection for a particular invention in one or more jurisdictions, the R&D Committee or the Committee, as the case may be, shall, designate the party with the most knowledge of the New R&D Invention (as determined by the unanimous agreement of the R&D Committee or the Committee, as the case may be) as the lead party (“Lead Party”) who will take primary responsibility for the preparation, filing, prosecution, and maintenance of any patents related to such New R&D Invention (“Patent Protection Process”). The non-lead party shall provide all reasonable cooperation and assistance in connection with the Patent Protection Process. The Lead Party will ensure that the non-lead party is kept informed of the status of and has an opportunity to review and comment on all aspects of the Patent Protection Process, including, but not limited to, copying the non-lead party on all patent related communications such as patent * The asterisk denotes that confidential portions of this exhibit have been omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The confidential portions have been submitted separately to the Securities and Exchange Commission applications, office actions, and responses and allowing the non-lead party not less than ten (10) business days to review and comment upon the specifications, claims, and responses to office actions prior to their submission to the appropriate patent office. The Lead Party shall use all reasonable efforts to incorporate and address the non-lead party’s comments. Notwithstanding the foregoing, final decisions regarding the specification claims and responses to office actions shall be made by the Lead Party. The applications shall be prepared, filed and prosecuted, and maintenance fees paid through an attorney or agent chosen by the Lead Party. Except as set forth in Section 7.3(a)(iii7.3(a)(ii) below, each party shall pay fifty percent (50%) of all expenses incurred hereafter pursuant to the Patent Protection Process (“Patent Expenses”) according to the following procedure. On a quarterly basis the Lead Party will provide the non-lead party with an invoice for Patent Expenses reporting the amount of Patent Expenses incurred, the purpose of incurring such Patent Expenses, and the amount of Patent Expenses owed by the non-lead party. The non-lead party will reimburse on a quarterly basis the Lead Party within thirty (30) days of receiving an invoice for Patent Expenses from the Lead Party. If the Lead Party anticipates extraordinary expenses arising from the Patent Protection Process, then the Lead Party will provide the non-lead party with full details and together the parties will determine a mutually acceptable course of action prior to incurring such expenditures. Both parties recognize that one party may incur certain legal expenses regarding the New R&D Invention and/or patent rights relating to matters pertaining solely to such party, and, in such circumstances, such expenses will not be considered Patent Expenses, unless otherwise decided by the Committee. The Lead Party will maintain adequate records showing all Patent Expenses incurred, which will be made available to the non-lead party upon reasonable notice. (ii) Notwithstanding Section 8.5 or Section 8.6, in the event that the Committee is deadlocked on whether to file a patent application for a particular invention New R&D Invention in one or more jurisdictions (i.e., where half of the Committee members are in favor of pursuing patent protection and half the Committee members are opposed), the party whose Committee members voted in favor of pursuing patent protection (the “Patent Proponent Party”) shall have the right to independently file a patent application covering such invention at its own costs and expense, and the other party shall provide all reasonable cooperation and assistance in connection therewith, including without limitation, ensuring that any of its employees who may be inventors under such patent application shall be joined as inventors thereto, and shall cause such employees to assign in writing their entire interest in such invention to the Patent Proponent Party. In such event, the patent shall be treated as an Improvement made by the Patent Proponent Party and shall be subject to the license provisions of Section 7.4(d). Notwithstanding the foregoing, any decisions by the Patent Proponent Party regarding whether to pursue patent protection or the scope of the applicable patent claims being sought shall take into consideration the legal and commercial interests of the other party, including without limitation the other party’s interest in avoiding disclosure of confidential information or technology in connection with its activities in their respective A▇▇▇ ▇▇▇▇▇▇ of Use.. * The asterisk denotes that confidential portions of this exhibit have been omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The confidential portions have been submitted separately to the Securities and Exchange Commission (iii) If, in one or more countries, (A) the Lead Party shall at any time decide not to prepare, file, prosecute or maintain any such patent application for any such New R&D Invention or (B) either party does not pay its share of the expenses related to the foregoing matters (in either situation, the “Declining Party”), the other party may, at its own expense, prepare, file, prosecute or maintain any such patent application in such country or countries. In such event, the Declining Party hereby assigns its interest in and to the New R&D Invention (but only with respect to such country or countries as applicable) underlying such patent application, and such application in such country or countries to the other party and such party hereby grants the Declining Party a license to use under such patents in accordance with the parties’ respective rights in Sections 7.4(a), 7.4(b), 7.4(d) and 7.4(b7.4(f).