Common use of Patent Prosecution and Maintenance Clause in Contracts

Patent Prosecution and Maintenance. 9.2.1 SGI shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shall, at its sole expense, prepare, file, prosecute and maintain such SGI Patents in good faith consistent with its customary patent policy and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing. 9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions owned solely by it in accordance with Section 9.1 and shall, at its sole expense, prepare, file, prosecute and maintain such patent rights in good faith consistent with its customary patent policy and its reasonable business judgment. Patents and patent applications claiming Program Inventions owned [***] in accordance with [***] ([***]) shall be controlled, prepared, filed, prosecuted and maintained by [***] (a) [***], (b) [***], if [***] or (c) of [***]. The cost of such outside legal expenses shall be borne by the Party that controls such [***] under (a) or (b) above and [***] if such [***] is controlled by [***]. The Party responsible for filing and controlling patent prosecution and maintenance for Program Inventions shall provide to the other Party copies of any response, document or communication with patent authorities that could materially affect the scope of any patent or patent application covering Program Inventions or detrimentally effect the rights of the Parties in such inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document within such [***] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention assigned to such Party pursuant to Section 9.1 in whole or in part, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereafter, the other Party shall have the right to prosecute or maintain such patent application or patent, at such Party’s sole expense. 9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may include the execution of necessary legal documents and the provision of the assistance of its relevant personnel.

Patent Prosecution and Maintenance. 9.2.1 SGI 7.1 Upon decision of the Steering Committee to file a Patent Application for the Joint Program IP (such Patent Applications, and all Patent Rights issued with respect thereto, the “Joint Patents”), such Patent Application shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shall, at its sole expense, prepare, file, prosecute and maintain such SGI Patents in good faith consistent with its customary patent policy and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing. 9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions owned solely by it in accordance with Section 9.1 and shall, at its sole expense, prepare, file, prosecute and maintain such patent rights in good faith consistent with its customary patent policy and its reasonable business judgment. Patents and patent applications claiming Program Inventions owned [***] in accordance with [***] ([***]) shall be controlled, prepared, filed, prosecuted and maintained by [***] the Party nominated by the Steering Committee for the specific Patent Application (athe “Filing Party”) [***], (b) [***], if [***] or (c) in the joint names of [***]Atugen and QBI. The cost Filing Party shall consult with the other Party about the contents of each Joint Patent Application prior to its filing, and shall obtain the other Party’s approval thereto, such outside legal expenses approval not to be unreasonably withheld. Unless otherwise determined by the Steering Committee each Joint Patent shall be filed in [ * ] and in such additional countries, as the parties will agree. The costs of filing and maintaining the Joint Patents shall be borne equally by the Parties. Each Party that controls shall promptly provide to the Filing Party all information, data or other assistance including, without limitation, the execution of any documents or instruments, necessary to enable such [***] under (a) or (b) above party to file, prosecute and [***] if such [***] is controlled by [***]. The defend the Patents and Patent Applications. 7.2 If either Party responsible for filing and controlling patent prosecution and maintenance for Program Inventions shall provide gives written notice to the other Party copies of any responsethat it does not wish to fund a Joint Patent (i) for a specific claim relating to the Joint Program IP, document or communication (ii) in a particular country, or fails to respond within [ * ] to a written request by the other party that it state its intention with patent authorities that could materially affect respect to such Joint Program IP, or if a Party fails to reimburse the scope of any patent or patent application covering Program Inventions or detrimentally effect the rights Filing Party for its half of the Parties in patent prosecution and/or maintenance expenses relating to such inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document Joint Patent within such [***] period, which comments shall be reasonably considered by the Party primarily responsible thirty days of Filing Party’s invoice for the prosecution. 9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention assigned to such Party pursuant to Section 9.1 in whole or in part, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereaftersame, the other Party shall have the right to prosecute file, in its own name and at its own expense, such Patent Application, or maintain application for such specific claim or in such country. In such event, the Filing Party shall have the exclusive right to develop Products derived from or covered by the claims in such patent application or patent, at such Party’s sole expenseapplication. 9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may include the execution of necessary legal documents and the provision of the assistance of its relevant personnel.

Patent Prosecution and Maintenance. 9.2.1 SGI shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shall, at its sole expense, prepare, file, prosecute and maintain such SGI Patents in good faith consistent with its customary patent policy and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing. 9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions owned solely by it in accordance with Section 9.1 and shall, at its sole expense, prepare, file, prosecute and maintain such patent rights in good faith consistent with its customary patent policy and its reasonable business judgment. Patents and patent applications claiming Program Inventions owned [***] in accordance with [***] ]([***]) shall be controlled, prepared, filed, prosecuted and maintained by [***] (a) [***], (b) [***], if [***] or (c) of [***]. The cost of such outside legal expenses shall be borne by the Party that controls such [***] under (a) or (b) above and [***] if such [***] is controlled by [***]. The Party responsible for filing and controlling patent prosecution and maintenance for Program Inventions shall provide to the other Party copies of any response, document or communication with patent authorities that could materially affect the scope of any patent or patent application covering Program Inventions or detrimentally effect the rights of the Parties in such inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document within such [***] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention assigned to such Party pursuant to Section 9.1 in whole or in part, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereafter, the other Party shall have the right to prosecute or maintain such patent application or patent, at such Party’s sole expense. 9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may include the execution of necessary legal documents and the provision of the assistance of its relevant personnel.

Patent Prosecution and Maintenance. 9.2.1 SGI (a) It is the intention of the parties to secure patent protection for Inventions. Genta shall be responsible for and shall control have the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shall, at its sole expense, right (but not the obligation) to prepare, file, prosecute and maintain such SGI all Genta Patents in good faith consistent with its customary patent policy and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing. 9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions owned solely by it in accordance with Section 9.1 and shall, at its Genta’s sole expense, . Emisphere shall have the right (but not the obligation) to prepare, file, prosecute and maintain such patent rights all Emisphere Patents at Emisphere’s sole expense. Each party shall consider in good faith consistent the requests and suggestions of the other party with its customary patent policy respect to strategies for filing and its reasonable business judgmentprosecuting Patents claiming Products being developed or commercialized by Genta under this Agreement, or the manufacture or use of such Products. The party responsible for the filing, prosecution, maintenance, enforcement and defense of any such Patents and patent applications claiming Program Inventions owned [***] in accordance shall keep the other party informed of progress with [***] ([***]) shall be controlled, prepared, filed, prosecuted and maintained by [***] (a) [***], regard thereto. (b) [***], if [***] or The parties shall mutually agree on a case-by-case basis which party (cthe “Responsible Party”) of [***]. The cost of such outside legal expenses shall will be borne by the Party that controls such [***] under (a) or (b) above and [***] if such [***] is controlled by [***]. The Party responsible for filing and controlling patent the preparation, filing, prosecution and maintenance for Program Inventions of Joint Patents. The parties shall provide share equally (50%/50%) the cost of preparation, filing, prosecution and maintenance of Joint Patents. The Responsible Party shall consult with the other party as to the preparation, filing, prosecution and maintenance of such Joint Patents reasonably prior to any deadline or action with the U.S. Patent & Trademark Office or any foreign patent office, and shall furnish to the other Party party copies of all relevant documents reasonably in advance of such consultation. In the event that the Responsible Party desires to abandon any responseJoint Patent, document or communication with patent authorities that could materially affect if the scope of Responsible Party later declines responsibility for any patent or patent application covering Program Inventions or detrimentally effect Joint Patent, the rights of the Parties in such inventions in any way, at least [***] Responsible Party shall provide reasonable prior written notice to the planned submission other party of such intention to abandon or communication. Such decline responsibility, and the other Party party shall have the opportunity right, at its expense, to comment on the response or document within such [***] periodprepare, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention assigned to such Party pursuant to Section 9.1 in whole or in partfile, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereafterprosecute, the other Party shall have the right to prosecute or and maintain such patent application or patent, at such Party’s sole expenseJoint Patent. 9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may include the execution of necessary legal documents and the provision of the assistance of its relevant personnel.

Patent Prosecution and Maintenance. 9.2.1 SGI shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shall, at its sole expense, prepare, file, prosecute and maintain such SGI Patents in good faith consistent with its customary patent policy and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing. SGI shall promptly provide Licensee a copy of all material, publicly available filings related to the SGI Patents to the extent such SGI Patents are related to a Licensed Product. 9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions owned solely by it in accordance [***] Certain information on this page has been omitted and filed separately with Section 9.1 the Securities and shall, at its sole expense, prepare, file, prosecute and maintain such patent rights in good faith consistent Exchange Commission. Confidential treatment has been requested with its customary patent policy and its reasonable business judgmentrespect to the omitted portions. Patents and patent applications claiming Program Inventions owned [***] by it in accordance with [***] (and shall, [***] in good faith consistent with [***]) . Patents and patent applications claiming Inventions owned [***] shall be controlled, prepared, filed, prosecuted and maintained by [***] (a) [***], (b) [***], if [***] or (c) of [***]. The cost of such outside legal expenses shall be borne by the Party that controls such [***] under (a) or (b) above and [***] if such [***] is controlled by [***]. The Party responsible for filing and controlling patent prosecution and maintenance for Program Inventions shall provide to the other Party copies of any response, document or communication with patent authorities that could materially affect the scope of any patent or patent application covering Program Inventions or detrimentally effect the rights of the Parties in such inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document within such [***] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention Invention assigned to such Party pursuant to Section 9.1 in whole or in part, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereafter, the other Party shall have the right to prosecute or maintain such patent application or patent, at such Party’s sole expense. The Party responsible for filing and controlling patent prosecution and maintenance for Inventions shall provide to the other Party copies of any response, document or communication with patent authorities that could materially affect the scope of any patent or patent application covering Inventions or detrimentally effect the rights of the Parties in such Inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document within such [***] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may include the execution of necessary legal documents documents, coordinating prosecution to avoid issues during prosecution including enablement, estoppel and double patenting, and the provision of the assistance of its relevant personnel. Further, notwithstanding anything to the contrary herein, neither Party shall disclose in any patent application, patent or publication of such party the Confidential Information of the other Party without prior written consent.

Patent Prosecution and Maintenance. 9.2.1 SGI The parties agree that they will coordinate with each other in all reasonable respects the worldwide prosecution of the Patents, subject to the provisions of this Section 7. TBC shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shallresponsible, at its sole expense, preparefor prosecuting and maintaining any patents and patent applications relating to the Patents in existence on the date of the License Agreement. Revotar shall be responsible, at its expense, for filing, prosecuting and maintaining the Patents to the extent they are not in existence on the date of the License Agreement (including Improvements owned by Revotar or jointly developed by Revotar and TBC, but excluding Improvements owned exclusively by TBC). Each party shall furnish the other party with copies of any patent application concerning Subject Technology or Improvements sufficiently in advance of the anticipated filing date (but in no event less than 5 working days before filing) so as to give the other party a reasonable opportunity to review and comment. Each party shall also furnish copies to the other party of all communications to and from United States and foreign patent offices regarding patents or patent applications relating to this Agreement within a reasonable time prior to filing such communication or promptly following the receipt thereof. Each party shall reasonably consider any comments the other party may have related to such patent applications or communications. Each party shall have the right at its expense to file, prosecute and maintain such SGI Patents patents in good faith consistent with its customary patent policy the United States and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing. 9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions all foreign countries on Improvements owned solely by it in accordance with Section 9.1 and shallit. Notwithstanding the foregoing, at its sole expensebeyond best efforts, prepare, file, prosecute and maintain such patent rights in good faith consistent with its customary patent policy and its reasonable business judgment. Patents and patent applications claiming Program Inventions owned [***] in accordance with [***] ([***]) shall be controlled, prepared, filed, prosecuted and maintained by [***] (a) [***], (b) [***], if [***] or (c) of [***]. The cost of such outside legal expenses shall be borne by the Party that controls such [***] under (a) or (b) above and [***] if such [***] is controlled by [***]. The Party responsible for filing and controlling patent prosecution and maintenance for Program Inventions shall provide neither party assumes liability to the other Party copies of any response, document or communication with patent authorities that could materially affect for the scope successful prosecution of any patent application. However, if either party shall fail to pay an annuity, tax or patent other maintenance fee with respect to a Patent or Patent application covering Program Inventions or detrimentally effect otherwise decide not to pursue a Patent relating to Improvements owned solely by it, it shall give the rights of the Parties in such inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have party timely notice and the opportunity to comment on the response or document within take such [***] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention assigned action and assume all ownership rights to such Party pursuant to Section 9.1 in whole Patent or in part, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereafter, the other Party shall have the right to prosecute or maintain such patent application or patent, at such Party’s sole expensePatent application. 9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may include the execution of necessary legal documents and the provision of the assistance of its relevant personnel.

Patent Prosecution and Maintenance. 9.2.1 SGI shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shall, at its sole expense, prepare, file, prosecute and maintain such SGI Patents in good faith consistent with its customary patent policy and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing. SGI shall promptly provide Licensee a copy of all material, publicly available filings related to the SGI Patents to the extent such SGI Patents are related to a Licensed Product. 9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions owned solely [*] by it in accordance with Section 9.1 [*] and shall, at its sole expense, prepare, file, prosecute and maintain such patent rights [*] in good faith consistent with its customary patent policy and its reasonable business judgment[*]. Patents and patent applications claiming Program Inventions owned [***] in accordance with [***] ([***]) shall be controlled, prepared, filed, prosecuted and maintained by [***] (a) [***], (b) [***], if [***] or (c) of [***]. The cost of such outside legal expenses shall be borne by the Party that controls such [***] under (a) or (b) above and [***] if such [***] is controlled by [***]. The Party responsible for filing and controlling patent prosecution and maintenance for Program Inventions shall provide to the other Party copies of any response, document or communication with patent authorities that could materially affect the scope of any patent or patent application covering Program Inventions or detrimentally effect the rights of the Parties in such inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document within such [***] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention Invention assigned to such Party pursuant to Section 9.1 in whole or in part, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereafter, the other Party shall have the right to prosecute or maintain such patent application or patent, at such Party’s sole expense. The Party responsible for filing and controlling patent prosecution and maintenance for Inventions shall provide to the other Party copies of any response, document or communication with patent authorities that could materially affect the scope of any patent or patent application covering Inventions or detrimentally effect the rights of the Parties in such Inventions in any way, at least [*] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document within such [*] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution. 9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may include the execution of necessary legal documents documents, coordinating prosecution to avoid issues during prosecution including enablement, estoppel and double patenting, and the provision of the assistance of its relevant personnel. Further, notwithstanding anything to the contrary herein, neither Party shall disclose in any patent application, patent or publication of such party the Confidential Information of the other Party without prior written consent.