Common use of Patent Filing Prosecution and Maintenance Clause in Contracts

Patent Filing Prosecution and Maintenance. Subject to the other terms of this Section 6.3, DYTECH shall be responsible for preparing, filing, prosecuting, obtaining and maintaining (collectively, “Patent Efforts”), at its sole expense and discretion, and using patent counsel reasonably acceptable to AMEDICA, all Patent Rights. DYTECH (i) will provide AMEDICA with a copy of any proposed patent application within the Patent Rights and relevant to AMEDICA’s Field of Use for review and comment reasonably in advance of filing, which shall under no circumstances be less than thirty (30) days), and (ii) will keep AMEDICA reasonably informed of the status of its Patent Efforts, including, without limitation, (A) by providing AMEDICA with copies of all communications received from or filed in patent office(s) with respect to Patent Rights, and (B) by providing AMEDICA, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of Patent Rights (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that AMEDICA has a reasonable opportunity to review and comment, which comments will be considered in good faith by DYTECH. If DYTECH fails to undertake or chooses not to undertake any Patent Efforts with respect to any invention under such Patent Rights or otherwise chooses to abandon, allow to lapse or cease maintenance of any of the Patent Rights, then DYTECH will notify AMEDICA thereof in writing not less than ninety (90) days prior to the last date for taking any action required to preserve such Patent Rights. AMEDICA will have the opportunity to purchase such Patent Rights, at an agreed market price, in which case Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 406 of the Securities Act of 1933, as amended. DYTECH would assign to AMEDICA all of its rights to such Patent Rights and any subsequently issued patents thereon in the applicable country or countries, each of which thereafter will be owned solely by AMEDICA subject to all other existing licenses.

Patent Filing Prosecution and Maintenance. Subject to the other terms of this Section 6.36.1, DYTECH Licensee shall be responsible for preparing, filing, prosecuting, obtaining and maintaining (collectively, “Patent Efforts”)maintaining, at its sole cost, expense and discretion, and using patent counsel reasonably acceptable to AMEDICALicensor, all Licensed Patent Rights. DYTECH Licensee (i) will provide AMEDICA Licensor with a copy of any proposed patent application within the Licensed Patent Rights and relevant to AMEDICA’s the Licensed Field of Use for review and comment reasonably in advance of filing, which shall under no circumstances be less than thirty (30) days), filing and (ii) will keep AMEDICA Licensor reasonably informed of the status of its Patent Effortssuch filing, prosecution and maintenance, including, without limitation, (A) by providing AMEDICA Licensor with copies of all communications received from or filed in patent office(s) with respect to Patent Rightssuch filing, and (B) by providing AMEDICALicensor, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of Patent Rights any such of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that AMEDICA Licensor has a reasonable opportunity to review and comment, which comments will be considered in good faith by DYTECH. If DYTECH fails to undertake or chooses Licensee shall elect not to undertake pay or continue to pay the costs for any Licensed Patent Efforts with respect to any invention under such Patent Rights or otherwise chooses to abandonRight, allow to lapse or cease maintenance of any Licensee shall so notify Licensor and Licensee shall be relieved of the obligation to pay any additional costs regarding such Licensed Patent Rights, then DYTECH will notify AMEDICA thereof in writing not less than ninety Right incurred thirty (9030) days prior after the receipt of such notice by Licensor. Such U.S. or foreign patent application or patent shall thereupon cease to the last date for taking any action required be a Licensed Patent Right hereunder and Licensor shall be free to preserve such Patent Rights. AMEDICA will have the opportunity to purchase such Patent Rights, at an agreed market price, in which case Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 406 of the Securities Act of 1933, as amended. DYTECH would assign to AMEDICA all of license its rights to such that particular Patent Rights and Right to any subsequently issued patents thereon in the applicable country or countries, each of which thereafter will be owned solely by AMEDICA subject to all other existing licensesparty on any terms.

Patent Filing Prosecution and Maintenance. Subject to the other terms of this Section 6.36.1, DYTECH Licensee shall be responsible for preparing, filing, prosecuting, obtaining and maintaining (collectively, “Patent Efforts”), at its sole cost, expense and discretion, and all Licensed Patent Rights in the Territory using patent counsel reasonably acceptable chosen by Licensee. Licensee shall direct such outside counsel to AMEDICA, all keep both parties informed of its activities related to the Licensed Patent Rights, to copy both Parties on all material prosecution filings and activities and to reasonably consider and incorporate the comments of each Party with respect thereto. DYTECH Notwithstanding the dispute resolution procedures set forth in Article 10.1, in the event of disagreement between the Parties over a course of action with respect to prosecution, the following procedure shall control: (i) the Parties shall first engage in good faith discussions to resolve the issue, and Licensee will provide AMEDICA with a copy of any proposed patent application within the Patent Rights reasonably consider Licensor’s comments and relevant to AMEDICA’s Field of Use for review and comment reasonably in advance of filing, which shall under no circumstances be less than thirty (30) days), concerns; and (ii) will keep AMEDICA reasonably informed if, despite such good faith efforts, the Parties are unable to reach agreement on a course of action hereunder, Licensee shall have final decision-making authority. The Parties agree that consultation between the Parties relating to the Licensed Patent Rights under this Section 6.1 shall be pursuant to a common interest in the validity, enforceability and scope of the status of its Patent Efforts, including, without limitation, (A) by providing AMEDICA with copies of all communications received from or filed in patent office(s) with respect to Licensed Patent Rights, and (B) by providing AMEDICA, . If Licensee determines that it desires to abandon prosecution of a reasonable time prior to taking or failing to take any action that would affect the scope or validity of patent application and/or patent in Licensed Patent Rights (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate applicationparticular country, or the failure it will give at least sixty (60) days’ written notice to file or perfect the filing of any claim(s) Licensor (but in any country), with prior written notice of such proposed action or inaction so that AMEDICA has a reasonable opportunity to review and comment, which comments will be considered in good faith by DYTECH. If DYTECH fails to undertake or chooses not to undertake any Patent Efforts with respect to any invention under such Patent Rights or otherwise chooses to abandon, allow to lapse or cease maintenance of any of the Patent Rights, then DYTECH will notify AMEDICA thereof in writing event not less than ninety (90) days days’ written notice prior to the last any due date for taking any action required response to preserve such a Patent RightsOffice action). AMEDICA will Licensor shall thereafter have the opportunity right to purchase such Patent Rights, assume complete control of all further patent prosecution in that country at an agreed market price, in which case Portions its sole expense. Licensee shall at the request of this Exhibit were omitted and have been filed separately with Licensor freely execute any documents necessary to vest the Secretary maximum legally-permissible control of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 406 of the Securities Act of 1933applicable patent application(s) or patent(s) in Licensee (e.g., as amended. DYTECH would assign to AMEDICA all of its rights to such Patent Rights and any subsequently issued patents thereon in the applicable country by assignment or countries, each of which thereafter will be owned solely by AMEDICA subject to all other existing licensesexclusive license).

Patent Filing Prosecution and Maintenance. Subject to the other terms and conditions of this Section 6.3Agreement, DYTECH DNA shall be responsible have the primary right and responsibility to prepare, register, record, file, prosecute and maintain in the name and for preparingthe benefit of DNA (subject to the licenses and rights granted in this License Agreement) all Licensed Technology (including all Intellectual Property Rights included therein) using counsel of its choice at its expense. DNA shall consult with VISTA and keep VISTA informed and apprised of the preparation, registration, recordation, filing, prosecutingprosecution and maintenance of the Licensed Technology and/or any challenges by third Persons to the validity or enforceability of the Licensed Technology. DNA shall provide or cause its counsel to promptly provide to VISTA and its counsel timely copies of all files, obtaining papers, notices, actions and maintaining (collectivelycorrespondence related to the preparation, “Patent Efforts”)registration, at its sole expense recordation, filing, prosecution and discretionmaintenance of the Licensed Technology. DNA shall not permit any action, and using patent counsel reasonably acceptable application or registration with respect to AMEDICA, all Patent Rights. DYTECH (i) will provide AMEDICA with a copy any of any proposed patent application within the Patent Rights and relevant Licensed Technology to AMEDICA’s Field of Use for review and comment reasonably in advance of filingbecome abandoned without giving VISTA the opportunity to pursue the prosecution thereof as soon as possible, which shall under no circumstances not be less than thirty sixty (3060) days)days prior to the date on which the same would otherwise become abandoned. Notwithstanding the foregoing, in the event DNA, in VISTA's reasonable discretion, fails to take all such necessary or appropriate action to prepare, register, record, file, prosecute, maintain or otherwise protect the Licensed Technology hereunder, VISTA shall be entitled to (a) undertake, in its own name, any or all such actions and efforts upon notice to DNA, and/or (iib) will keep AMEDICA appoint successor intellectual property counsel, after consultation with DNA, if the counsel appointed by DNA has failed to diligently pursue such actions. At no additional expense to VISTA, DNA agrees to cooperate with VISTA and to cause its employees and former employees to cooperate with VISTA, as VISTA may reasonably informed request, in the exercise of the status of its Patent EffortsVISTA's rights under this Section 5.5, including, without limitation, (Ai) meeting with and being interviewed by providing AMEDICA with copies counsel for VISTA, (ii) promptly executing all applications, documents, instruments, powers of all communications received from attorney, affidavits or filed in patent office(swritings reasonably requested by VISTA, (iii) with respect to Patent Rights, and (B) by providing AMEDICA, a reasonable time prior to taking or failing to take any action promptly informing VISTA of matters that would may affect the scope preparing, registering, recording, filing, prosecution, or validity maintenance of any such Patent Rights (including the substantially narrowing, cancellation or abandonment such as becoming aware of any claim(s) without retaining the right to pursue such subject matter an additional inventor who is not listed as an inventor in a separate application, patent application)and/or the failure to file or perfect the filing of any claim(s(iv) in any country), with prior written notice of such proposed action or inaction so that AMEDICA has a reasonable opportunity to review and comment, which comments will be considered in good faith giving truthful testimony as reasonably requested by DYTECH. If DYTECH fails to undertake or chooses not to undertake any Patent Efforts with respect to any invention under such Patent Rights or otherwise chooses to abandon, allow to lapse or cease maintenance of any of the Patent Rights, then DYTECH will notify AMEDICA thereof in writing not less than ninety (90) days prior to the last date for taking any action required to preserve such Patent Rights. AMEDICA will have the opportunity to purchase such Patent Rights, at an agreed market price, in which case Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 406 of the Securities Act of 1933, as amended. DYTECH would assign to AMEDICA all of its rights to such Patent Rights and any subsequently issued patents thereon in the applicable country or countries, each of which thereafter will be owned solely by AMEDICA subject to all other existing licensesVISTA.

Patent Filing Prosecution and Maintenance. Subject to the other terms and conditions of this Section 6.3Agreement, DYTECH DNA shall be responsible have the primary right and responsibility to prepare, register, record, file, prosecute and maintain in the name and for preparingthe benefit of DNA (subject to the licenses and rights granted in this License Agreement) all Licensed Technology (including all Intellectual Property Rights included therein) using counsel of its choice at its expense. DNA shall consult with VISTA and keep VISTA informed and apprised of the preparation, registration, recordation, filing, prosecutingprosecution and maintenance of the Licensed Technology and/or any challenges by third Persons to the validity or enforceability of the Licensed Technology. DNA shall provide or cause its counsel to promptly provide to VISTA and its counsel timely copies of all files, obtaining papers, notices, actions and maintaining (collectivelycorrespondence related to the preparation, “Patent Efforts”)registration, at its sole expense recordation, filing, prosecution and discretionmaintenance of the Licensed Technology. DNA shall not permit any action, and using patent counsel reasonably acceptable application or registration with respect to AMEDICA, all Patent Rights. DYTECH (i) will provide AMEDICA with a copy any of any proposed patent application within the Patent Rights and relevant Licensed Technology to AMEDICA’s Field of Use for review and comment reasonably in advance of filingbecome abandoned without giving VISTA the opportunity to pursue the prosecution thereof as soon as possible, which shall under no circumstances not be less than thirty sixty (3060) days)days prior to the date on which the same would otherwise become abandoned. Notwithstanding the foregoing, in the event DNA, in VISTA’s reasonable discretion, fails to take all such necessary or appropriate action to prepare, register, record, file, prosecute, maintain or otherwise protect the Licensed Technology hereunder, VISTA shall be entitled to (a) undertake, in its own name, any or all such actions and efforts upon notice to DNA, and/or (iib) will keep AMEDICA appoint successor intellectual property counsel, after consultation with DNA, if the counsel appointed by DNA has failed to diligently pursue such actions. At no additional expense to VISTA, DNA agrees to cooperate with VISTA and to cause its employees and former employees to cooperate with VISTA, as VISTA may reasonably informed request, in the exercise of the status of its Patent EffortsVISTA’s rights under this Section 5.5, including, without limitation, (Ai) meeting with and being interviewed by providing AMEDICA with copies counsel for VISTA, (ii) promptly executing all applications, documents, instruments, powers of all communications received from attorney, affidavits or filed in patent office(swritings reasonably requested by VISTA, (iii) with respect to Patent Rights, and (B) by providing AMEDICA, a reasonable time prior to taking or failing to take any action promptly informing VISTA of matters that would may affect the scope preparing, registering, recording, filing, prosecution, or validity maintenance of any such Patent Rights (including the substantially narrowing, cancellation or abandonment such as becoming aware of any claim(s) without retaining the right to pursue such subject matter an additional inventor who is not listed as an inventor in a separate application, patent application)and/or the failure to file or perfect the filing of any claim(s(iv) in any country), with prior written notice of such proposed action or inaction so that AMEDICA has a reasonable opportunity to review and comment, which comments will be considered in good faith giving truthful testimony as reasonably requested by DYTECH. If DYTECH fails to undertake or chooses not to undertake any Patent Efforts with respect to any invention under such Patent Rights or otherwise chooses to abandon, allow to lapse or cease maintenance of any of the Patent Rights, then DYTECH will notify AMEDICA thereof in writing not less than ninety (90) days prior to the last date for taking any action required to preserve such Patent Rights. AMEDICA will have the opportunity to purchase such Patent Rights, at an agreed market price, in which case Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 406 of the Securities Act of 1933, as amended. DYTECH would assign to AMEDICA all of its rights to such Patent Rights and any subsequently issued patents thereon in the applicable country or countries, each of which thereafter will be owned solely by AMEDICA subject to all other existing licensesVISTA.

Patent Filing Prosecution and Maintenance. Subject to Glenveigh shall own or Control (as applicable) patents or patent applications within the other terms Licensed Patents in the Territory. During the term of this Section 6.3Agreement, DYTECH Protherics shall be responsible for, and shall diligently carry out and shall bear all costs (including attorneys’ fees) for preparingthe preparation, filing, prosecutingprosecution, obtaining maintenance and maintaining (collectivelyextensions(if any) of all patents or patent applications within the Licensed Patents in the Territory. The filing, “Patent Efforts”), at its sole expense prosecution and discretion, maintenance of patents and using patent applications pursuant to this Section 6.2 shall be done through patent counsel selected by Protherics and reasonably acceptable to AMEDICAGlenveigh. Protherics will keep Glenveigh informed of all significant patent matters relating to the Licensed Patents, all Patent Rights. DYTECH (i) and will give Glenveigh a reasonable opportunity to review and provide AMEDICA with a copy input on the prosecution of any proposed patent application applications within the Patent Rights Licensed Patents. Protherics shall use Commercially Reasonable Efforts to prosecute the applications within the Licensed Patents in good faith, and with at least the same degree of diligence as Protherics devotes to its own patent applications directed to similar products at a similar stage of development with similar market potential, and in a manner reasonably calculated to achieve the patent issuance-related triggering event set forth in Section 5.9(i) (unless such achievement is inconsistent with Protherics’ patent strategy for the Product, as reasonably formulated by Protherics using its sound business judgment in view of all relevant to AMEDICA’s Field of Use for review circumstances). Protherics shall have the right, after consultation with Glenveigh, and comment reasonably in advance of filing, which shall under upon no circumstances be less than thirty (30) days)’ notice, and (ii) will keep AMEDICA reasonably informed to abandon any of the status of its Patent Effortspatents or patent applications within the Licensed Patents in the Territory In the event that Protherics decides to abandon any patent and/or patent application within the Licensed Patents in the Territory, including, without limitation, (A) by providing AMEDICA with copies of all communications received from or filed in patent office(s) with respect to Patent Rights, and (B) by providing AMEDICA, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of Patent Rights (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining Glenveigh shall have the right to pursue such subject matter in a separate applicationcontinue the filing, prosecution or the failure to file or perfect the filing maintenance of any claim(s) in any country), with prior written notice of such proposed action patent or inaction so patent application that AMEDICA has a reasonable opportunity to review and comment, which comments will be considered in good faith by DYTECH. If DYTECH fails to undertake or chooses not to undertake any Patent Efforts with respect to any invention under such Patent Rights or otherwise chooses Protherics wishes to abandon, allow to lapse or cease maintenance of any of the Patent Rights, then DYTECH will notify AMEDICA thereof in writing not less than ninety (90) days prior to the last date for taking any action required to preserve such Patent Rights. AMEDICA will have the opportunity to purchase such Patent Rights, at an agreed market price, in which case Portions of this Exhibit were omitted Glenveigh’s sole cost and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 406 of the Securities Act of 1933, as amended. DYTECH would assign to AMEDICA all of its rights to such Patent Rights and any subsequently issued patents thereon in the applicable country or countries, each of which thereafter will be owned solely by AMEDICA subject to all other existing licensesexpense.

Patent Filing Prosecution and Maintenance. Subject to the other terms of this Section 6.36.1, DYTECH Licensee shall be responsible for preparing, filing, prosecuting, obtaining and maintaining (collectively, “Patent Efforts”)maintaining, at its sole cost, expense and discretion, and using patent counsel reasonably acceptable to AMEDICALicensee, all Licensed Patent RightsRights in all relevant countries. DYTECH Licensee (i) will provide AMEDICA Licensor with a copy of any proposed patent application or prosecution or other document relating to a patent or application within the Licensed Patent Rights and relevant to AMEDICA’s the Licensed Field of Use for review and comment reasonably in advance of filing, filing which shall under no circumstances be less than thirty (30) days), and (ii) will keep AMEDICA Licensee reasonably informed of the status of its Patent Effortssuch filing, prosecution and maintenance, including, without limitation, (A) by providing AMEDICA Licensor with copies of all communications received from or filed in patent office(s) with respect to Patent Rightssuch filing, and (B) by providing AMEDICALicensor, a reasonable time prior to taking or failing to take any action that would affect the scope or validity of Patent Rights any such of any such filing (including the substantially narrowing, cancellation or abandonment of any claim(s) without retaining the right to pursue such subject matter in a separate application, or the failure to file or perfect the filing of any claim(s) in any country), with prior written notice of such proposed action or inaction so that AMEDICA Licensor has a reasonable opportunity to review and comment, which comments will be considered in good faith by DYTECH. If DYTECH Licensee fails to undertake the filing(s) of any patent application or chooses not to undertake any Patent Efforts submission with respect to any invention under such Patent Rights or otherwise chooses to abandon, allow to lapse or cease maintenance of any of the Licensed Patent Rights, then DYTECH will notify AMEDICA thereof in writing not less than ninety (90) days prior to the last date for taking any action required making the applicable filing or submission to preserve rights under such Patent Rights. AMEDICA will have the opportunity to purchase patent application, Licensor may undertake such Patent Rights, filing(s) at an agreed market priceits own expense, in which case Portions of this Exhibit were omitted and have been filed separately with the Secretary of the Commission pursuant to the Company’s application requesting confidential treatment under Rule 406 of the Securities Act of 1933, as amended. DYTECH would Licensee will assign to AMEDICA Licensor all of its rights to such Patent Rights patent application and invention and any subsequently issued patents patent thereon in the applicable country or countriescountries in which Licensor undertakes such filing(s), each of which thereafter will be owned solely by AMEDICA subject to all other existing licensesLicensor.