Common use of Prosecution & Maintenance Clause in Contracts

Prosecution & Maintenance. COMPANY will bear all expenses relating to the filing, prosecution, and maintenance of all PATENT RIGHTS after the EFFECTIVE DATE. Upon approval of the law firm by LICENSOR, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directly, so long as LICENSOR is copied on all correspondence and notified prior to any substantive actions. Title to all patents and patent applications shall reside in LICENSOR. COMPANY shall (a) cause its patent counsel to timely copy LICNESOR on all official actions and written correspondence with any patent office, and (b) allow LICENSOR and/or its counsel an opportunity and reasonably sufficient time to comment and advise COMPANY with respect thereto. COMPANY shall consider in good faith and reasonably incorporate all comments and advice from LICENSOR. At least thirty (30) days in advance of any filing or response deadline, or fee due date, COMPANY may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within PATENT RIGHTS, provided that COMPANY pays for all costs incurred up to LICENSOR’S receipt of such notification. Failure to provide such notification will be considered by LICENSOR to be COMPANY’s willingness to proceed at COMPANY’s expense. Upon such notification, at LICENSOR’S own expense, LICENSOR may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”), and any rights or license granted hereunder held by COMPANY, AFFILIATED COMPANIES or SUBLICENSEE(S) relating to COMPANY-ABANDONED PATENTS shall terminate.

Prosecution & Maintenance. COMPANY will bear all expenses relating to (a) JHU shall be responsible for the filing, prosecution, maintenance and maintenance of all PATENT RIGHTS after the EFFECTIVE DATE. Upon approval prosecution of the law firm by LICENSOR, COMPANY may oversee future TEGVAX patent prosecution using its patent counsel rights among the Licensed Patent Rights (JHU Ref# C05152 and pay patent expenses directly, so long as LICENSOR is copied on all correspondence and notified prior to any substantive actionsC11641). Title to all patents and patent applications shall reside in LICENSOR. COMPANY JHU shall (a) cause its patent counsel to timely copy LICNESOR Company on all official actions and written correspondence with any patent office, and (b) allow LICENSOR and/or its counsel an Company a reasonable opportunity and reasonably sufficient time to comment and advise COMPANY with respect theretoJHU. COMPANY JHU shall consider in good faith and reasonably incorporate all comments and advice from LICENSORadvice. At Company shall be responsible for the maintenance and prosecution of the STINGVAX Patent Rights (JHU Ref# C12043). JHU will be notified, in advance, of the filing and prosecution of all patents and patent applications and have a full opportunity for input, which will be carefully considered by Company. By concurrent written notification to JHU and its patent counsel at least thirty (30) [ * ] days in advance (or later at JHU’s discretion) of any filing or response deadline, or fee due date, COMPANY Company may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting the prosecution or maintaining any patent application or patent within PATENT RIGHTSpatent, provided that COMPANY Company pays for all costs incurred up to LICENSOR’S JHU’s receipt of such notification. Failure to provide such notification will can be considered by LICENSOR JHU to be COMPANYCompany’s willingness authorization to proceed at COMPANYCompany’s expense. Upon such notification, at LICENSOR’S own expense, LICENSOR JHU may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”)at its own expense and for its own benefit, and any rights or license granted hereunder held by COMPANYCompany, AFFILIATED COMPANIES Affiliates or SUBLICENSEE(SSublicensee(s) relating to COMPANY-ABANDONED PATENTS the Licensed Patent Rights which comprise the subject of such patent applications or patent and/or apply to the particular country, shall terminate. (b) Company will reimburse JHU for all reasonable documented past costs, and all reasonable future costs associated with preparing, filing, maintaining and prosecuting the Licensed Patent Rights within the Field. JHU shall provide an invoice of all past patent costs (to the extent not already invoiced and/or paid) after execution of this Agreement. Unreimbursed past patent expenses are currently estimated at about $[ * ] (this amount does not include estimate for national phase filings for TEGVAX IP (JHU Ref# C11641)). The patent costs shall be due within [ * ] days of receipt of an invoice from JHU.

Prosecution & Maintenance. COMPANY will bear JHU, at Company’s expense (except as provided below), and following reasonable consultation with Company (as provided below), shall file, prosecute and maintain all expenses relating patents and patent applications specified under PATENT RIGHTS and, subject to the filingterms and conditions of this Agreement, prosecution, and maintenance of all PATENT RIGHTS after the EFFECTIVE DATE. Upon approval of the law firm by LICENSOR, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directly, so long as LICENSOR is copied on all correspondence and notified prior to any substantive actionsCompany shall be licensed thereunder. Title to all such patents and patent applications shall reside in LICENSORJHU. COMPANY JHU shall have full and complete control over all patent matters in connection therewith under the PATENT RIGHTS, provided however, that JHU shall (a) cause its patent counsel to timely copy LICNESOR Company on all official actions and written correspondence with any patent office, and (b) allow LICENSOR and/or its counsel Company an opportunity and reasonably sufficient time to comment and advise COMPANY with respect theretoJHU. COMPANY JHU shall consider in good faith and reasonably incorporate all comments and advice from LICENSORprovided by Company. At By concurrent written notification to JHU and its patent counsel at least thirty (30) days in advance (or later at JHU’s discretion) of any filing or response deadline, or fee due date, COMPANY Company may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within PATENT RIGHTSpatent, provided that COMPANY Company pays for all costs incurred up to LICENSOR’S the date of JHU’s receipt of such notification. Failure to provide such notification will can be considered by LICENSOR JHU to be COMPANYCompany’s willingness authorization to proceed with the relevant filing at COMPANYCompany’s expense. Upon such notification, at LICENSOR’S own expense, LICENSOR JHU may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”)at its own expense and for its own benefit, and any rights or license granted hereunder held by COMPANYCompany, AFFILIATED COMPANIES or SUBLICENSEE(S) SUBLICENSEES, relating to COMPANY-ABANDONED PATENTS the PATENT RIGHTS which comprise the subject of such patent applications or patent and/or apply to the particular country, shall terminate.

Prosecution & Maintenance. COMPANY will bear 4.1.1 Title to all expenses relating PATENT RIGHTS pursuant to this Agreement shall reside in JHU. 4.1.2 The parties acknowledge that, under the filingHead License, prosecution, JHU shall take primary responsibility for the prosecution and maintenance of all PATENT RIGHTS after in the EFFECTIVE DATETERRITORY. Upon approval of JHU shall have primary responsibility for the law firm by LICENSORPATENT RIGHTS prosecuted and maintained in any jurisdiction in the TERRITORY, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directlyat HPPI’s expense, so long as LICENSOR is copied on shall file, prosecute and maintain all correspondence and notified prior to any substantive actions. Title to all such patents and patent applications that, subject to the terms and conditions of this Agreement, HPPI has obtained a license hereunder. Notwithstanding the forgoing, JHU shall reside have full and complete control over all patent prosecution matters in LICENSOR. COMPANY shall connection therewith under the PATENT RIGHTS in the TERRITORY, provided however, that Mayne Pharma shall (a) cause its patent counsel timely provide to timely copy LICNESOR on all HPPI copies of non confidential official actions and written correspondence with any patent officethe USPTO regarding the PATENT RIGHTS in the TERRITORY, and (b) consult with HPPI and allow LICENSOR and/or its counsel HPPI an opportunity to comment, which comments Mayne Pharma will consider and reasonably sufficient time as appropriate, pass onto JHU. 4.1.3 Provided Mayne Pharma has provided HPPI with at least *** written notice of any filing or response deadline or fee due date, by written notification to comment and advise COMPANY with respect thereto. COMPANY shall consider in good faith and reasonably incorporate all comments and advice from LICENSOR. At Mayne Pharma at least thirty (30) days in advance *** of any filing or response deadline, or fee due datedate (or where Mayne Pharma has not provided sufficient advance notice, COMPANY such shorter period such that HPPI has at least *** to consider its election), HPPI may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within comprising the PATENT RIGHTS, provided that COMPANY HPPI pays for all costs incurred up to LICENSOR’S receipt of such notification. Failure to provide such notification will can be considered by LICENSOR to be COMPANYHPPI’s willingness authorization to proceed at COMPANYHPPI’s expense. Upon such notification, at LICENSOR’S own expenseon behalf of Mayne Pharma, LICENSOR JHU may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”), at its own expense and for its own benefit and any rights or license granted hereunder held by COMPANY, AFFILIATED COMPANIES HPPI or any SUBLICENSEE(S) relating to COMPANY-ABANDONED PATENTS the PATENT RIGHTS which comprise the subject of such patent applications or patent and/or apply to the TERRITORY, shall terminate.

Prosecution & Maintenance. COMPANY will bear 4.1.1 Title to all expenses relating PATENT RIGHTS pursuant to this Agreement shall reside in JHU. 4.1.2 The parties acknowledge that, under the filingHead License, prosecution, JHU shall take primary responsibility for the prosecution and maintenance of all PATENT RIGHTS after in the EFFECTIVE DATETERRITORY. Upon approval of JHU shall have primary responsibility for the law firm by LICENSORPATENT RIGHTS prosecuted and maintained in any jurisdiction in the TERRITORY, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directlyat INTI’s expense, so long as LICENSOR is copied on shall file, prosecute and maintain all correspondence and notified prior to any substantive actions. Title to all such patents and patent applications that, subject to the terms and conditions of this Agreement, INTI has obtained a license hereunder. JHU shall reside have full and complete control over all patent prosecution matters in LICENSOR. COMPANY connection therewith under the PATENT RIGHTS in the TERRITORY, provided however, that Mayne Pharma shall (a) cause its patent counsel timely provide to timely copy LICNESOR on all INTI copies of non-confidential official actions and written correspondence with any patent officethe USPTO regarding the PATENT RIGHTS in the TERRITORY, and (b) consult with INTI and allow LICENSOR and/or its counsel INTI an opportunity to comment, which comments Mayne Pharma will consider and reasonably sufficient time as appropriate, pass onto JHU. 4.1.3 INTI shall be responsible for all reasonable out-of-pocket expenses associated with the filing, prosecution and maintenance of the ANGIOGENESIS PATENTS RIGHTS and the HEDGEHOG PATENT(s) in the TERRITORY. Provided Mayne Pharma has provided INTI with at least *** advance written notice of any filing or response deadline or fee due date, by written notification to comment and advise COMPANY with respect thereto. COMPANY shall consider in good faith and reasonably incorporate all comments and advice from LICENSOR. At Mayne Pharma at least thirty (30) days *** in advance of any filing or response deadline, or fee due datedate (or where Mayne Pharma has not provided sufficient advance notice, COMPANY such shorter period such that INTI has at least *** to consider its election), INTI may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within comprising the PATENT RIGHTS, provided that COMPANY INTI pays for all costs incurred up to LICENSOR’S receipt of such notification. Failure to provide such notification will can be considered by LICENSOR to be COMPANYINTI’s willingness authorization to proceed at COMPANYINTI’s expense. Upon such notification, at LICENSOR’S own expenseon behalf of Mayne Pharma, LICENSOR JHU may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”), at its own expense and for its own benefit and any rights or license granted hereunder held by COMPANY, AFFILIATED COMPANIES INTI or any SUBLICENSEE(S) relating to COMPANY-ABANDONED PATENTS the PATENT RIGHTS which comprise the subject of such patent applications or patent and/or apply to the TERRITORY, shall terminate.

Prosecution & Maintenance. COMPANY will bear 4.1.1 Title to all expenses relating PATENT RIGHTS pursuant to this Agreement shall reside in JHU. 4.1.2 The parties acknowledge that, under the filingHead License, prosecution, JHU shall take primary responsibility for the prosecution and maintenance of all PATENT RIGHTS after in the EFFECTIVE DATETERRITORY. Upon approval of JHU shall have primary responsibility for the law firm by LICENSORPATENT RIGHTS prosecuted and maintained in any jurisdiction in the TERRITORY, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directlyat HPPI’s expense, so long as LICENSOR is copied on shall file, prosecute and maintain all correspondence and notified prior to any substantive actions. Title to all such patents and patent applications that, subject to the terms and conditions of this Agreement, HPPI has obtained a license hereunder. Notwithstanding the forgoing, JHU shall reside have full and complete control over all patent prosecution matters in LICENSOR. COMPANY connection therewith under the PATENT RIGHTS in the TERRITORY, provided however, that Mayne Pharma shall (a) cause its patent counsel timely provide to timely copy LICNESOR on all HPPI copies of non-confidential official actions and written correspondence with any patent officethe USPTO regarding the PATENT RIGHTS in the TERRITORY, and (b) consult with HPPI and allow LICENSOR and/or its counsel HPPI an opportunity to comment, which comments Mayne Pharma will consider and reasonably sufficient time as appropriate, pass onto JHU. 4.1.3 Provided Mayne Pharma has provided HPPI with at least *** advance written notice of any filing or response deadline or fee due date, by written notification to comment and advise COMPANY with respect thereto. COMPANY shall consider in good faith and reasonably incorporate all comments and advice from LICENSOR. At Mayne Pharma at least thirty (30) days in advance *** of any filing or response deadline, or fee due datedate (or where Mayne Pharma has not provided sufficient advance notice, COMPANY such shorter period such that HPPI has at least *** to consider its election), HPPI may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within comprising the PATENT RIGHTS, provided that COMPANY HPPI pays for all costs incurred up to LICENSOR’S receipt of such notification. Failure to provide such notification will can be considered by LICENSOR to be COMPANYHPPI’s willingness authorization to proceed at COMPANYHPPI’s expense. Upon such notification, at LICENSOR’S own expenseon behalf of Mayne Pharma, LICENSOR JHU may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”), at its own expense and for its own benefit and any rights or license granted hereunder held by COMPANY, AFFILIATED COMPANIES HPPI or any SUBLICENSEE(S) relating to COMPANY-ABANDONED PATENTS the PATENT RIGHTS which comprise the subject of such patent applications or patent and/or apply to the TERRITORY, shall terminate.