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|DURECT CORP filed this Form 10-Q on 11/08/2018|
respect to the LICENSED PATENT RIGHTS and LICENSOR will use reasonable efforts to accommodate LICENSEE’s requests.
4.5LICENSEE shall reimburse all reasonable documented outside legal expenses, not already reimbursed by LICENSEE, incurred by LICENSOR after the Effective Date of the Option Agreement and not already reimbursed by LICENSEE as of the EFFECTIVE DATE, and during the term of this Agreement by LICENSOR in filing, prosecuting and maintaining the LICENSED PATENT RIGHTS (the “Patent Prosecution Costs”), within thirty (30) days after receipt of an undisputed invoice from LICENSOR. Any payments to LICENSOR’s counsel are made with the understanding that such payments do not create an attorney-client relationship between LICENSEE and such counsel.
4.6LICENSOR or its patent counsel shall inform LICENSEE in a timely manner (in writing, including via email) as to all developments with respect to the LICENSED PATENT RIGHTS on a worldwide basis, including all actions necessary for the filing, prosecution, issuance and maintenance of LICENSED PATENT RIGHTS (including promptly furnishing LICENSEE with copies of all correspondence in relation thereto including copies of communications from the Patent and Trademark Office, including foreign patent offices, and correspondence from foreign patent counsel) and shall promptly furnish to LICENSEE copies of all papers received and filed in connection with the prosecution thereof in sufficient time for LICENSEE to comment thereon. LICENSEE shall promptly instruct LICENSOR in writing whether to take such action at LICENSEE’s expense. Provided LICENSOR has timely notified LICENSEE of any proposed actions as provided for herein, if LICENSOR does not receive from LICENSEE written or oral instruction to take the action at issue within fifteen (15) days prior to the statutory bar date for such action, LICENSOR shall have no obligation to take or have taken such action to protect the LICENSED PATENT RIGHTS at issue, even if the result is the irrevocable loss of rights.
4.7If LICENSOR decides to file patent applications, continuations, divisionals, continuations-in-part, substitutes, renewals, reissues, extensions, confirmations, reexaminations or registrations with respect to the LICENSED PATENT RIGHTS in any countries other than those countries where LICENSEE has directed LICENSOR to file under Section 4.4, LICENSOR shall be responsible for all of the costs, expenses and fees associated with the LICENSED PATENT RIGHTS in such countries. If LICENSEE declines to pay in full any reasonable, documented outside legal expenses necessary for the filing, protection or maintenance of any LICENSED PATENT RIGHTS that LICENSEE directed LICENSOR to file under Section 4.4, LICENSOR shall have the right to (i) abandon the LICENSED PATENT RIGHTS for which payment has not been made in full, at LICENSOR’s sole discretion, or (ii) incur those costs at its own expense. In the former case, the royalty rate for NET SALES of LICENSED PRODUCTS sold in the country where all such LICENSED PATENT RIGHTS have been abandoned and there are no VALID CLAIMS of any LICENSED PATENT RIGHTS in such country covering the manufacture, use or sale of LICENSED PRODUCT in such country, will be reduced by fifty percent (50%). In the latter case in which LICENSOR continues to pursue patent protection at its own expense, LICENSOR may require LICENSEE to pay royalties for NET SALES of LICENSED PRODUCTS in that country as specified in Appendix B.
4.8 If LICENSOR decides to abandon prosecution or maintenance of any patent application or patent within the LICENSED PATENT RIGHTS in a country where LICENSEE has requested LICENSOR to make and maintain such filing or patent, LICENSOR shall provide LICENSEE written notice of LICENSOR’s intent to abandon such application or patent in sufficient time to permit LICENSEE in its discretion to continue such prosecution or maintenance. In such event, LICENSEE shall have the right to continue prosecution of said application, or maintenance of such patent, at its own expense, on behalf of LICENSOR and LICENSEE. In such event, LICENSOR shall execute all documents and perform such acts as may be reasonably necessary for LICENSEE to continue such prosecution or maintenance.