Filing, Prosecution and Maintenance Clause Samples

Filing, Prosecution and Maintenance. As between the Parties, SunEdison shall have the sole and exclusive right, but not the obligation, to file, prosecute and maintain, at its cost and expense, all patents and patent applications licensed to SSL pursuant to ARTICLE II; provided, however, that if SunEdison elects not to file, prosecute or maintain any Licensed IP, then SunEdison shall so notify SSL in writing at least ninety (90) days before any deadline applicable to the filing, prosecution or maintenance of such Licensed IP, as the case may be; provided, that if SunEdison becomes aware of any certain Licensed IP in connection with which there is less than ninety (90) days’ notice available, then SunEdison shall make such written notification to SSL as promptly as practicable. SSL acknowledges and agrees that from time to time, such Licensed IP may include SunEdison Technology that SunEdison has determined to maintain as a trade secret, and as such, determined not to file any patent application on such Licensed IP. Upon receipt of such notice, SSL shall have the right, but not the obligation, at its cost and expense, to pursue the filing or support the continued prosecution or maintenance of such Licensed IP (excluding any Licensed IP for which SunEdison has notified SSL of SunEdison’s determination to maintain such Licensed IP as a trade secret). Notwithstanding, such exclusion shall not apply to the SSL Improvements. SSL shall have the unfettered right to pursue the filing or support the continued prosecution or maintenance of the SSL Improvements if SunEdison elects not to do so. If SSL does elect to take such action, then SSL shall notify SunEdison of such election, and SunEdison shall reasonably cooperate with SSL, upon SSL’s request and at SSL’s cost and expense, in connection with such filing or continued prosecution or maintenance, as applicable. Any and all patent(s) and patent rights resulting from or maintained pursuant to this Section 5.1 shall be assigned to SunEdison and shall be considered as SunEdison Patent Rights and Licensed IP.

Filing, Prosecution and Maintenance. Licensor shall be responsible for and shall use commercially reasonable efforts to file, prosecute and maintain all trademarks and domain names and related registrations and registration applications for the Licensed Marks in the Territory. Except and to the extent expressly provided herein, nothing contained in this Branding Agreement shall be construed as: (a) requiring the securing or the maintaining of any intellectual property protection for the Licensed Marks; (b) a warranty or representation as to the validity or scope of the Licensed Marks; (c) an agreement to bring or prosecute actions or suits against third parties for Unauthorized Use; or (d) conferring by implication, estoppel or otherwise any license or other right under any other Intellectual Property, except as expressly granted herein.

Filing, Prosecution and Maintenance. Subject to Sections 2.3(a), 2.3(b), 7.2(b), and 7.2(c), Legacy shall be responsible for, and be obligated to use Commercially Reasonable Efforts to pursue, the preparation, filing, prosecution (including but not limited to, by conducting interferences, oppositions and reexaminations or other similar proceedings), maintenance (by timely paying all maintenance fees, renewal fees and other applicable fees and costs), and extension of any Patent Rights within the Legacy Patents. Subject to any applicable limitations on disclosure to Primary set forth in Section 8.2(b)(i) of the Existing Ag Agreement, which, upon Primary’s request, Legacy shall use Commercially Reasonable Efforts to have waived by Ag Partner with respect to disclosures to Primary, its Affiliates, and their respective licensees and sublicensees, (I) Legacy will regularly advise Primary of the status of all pending patent applications in the Legacy Patents, including any related hearings or other proceedings, and, at Primary’s request, will provide Primary with copies of all documentation concerning such applications, including all correspondence to and from any Governmental Authority; (II) Legacy shall consult with and obtain written consent from Primary prior to the abandonment of any Legacy Patent or any claim contained therein, which consent shall not be unreasonably withheld, delayed, or conditioned; Primary shall have the right, upon written notice given prior to any such abandonment, to have such Legacy Patent assigned to Primary, free and clear of all liens, claims, and encumbrances, and upon any such assignment (i) such Legacy Patent shall no longer be included within the definition of Legacy Patents or Primary Patents for purposes of this Agreement, (ii) any compounds claimed therein shall be deemed not to be CDCs nor VDCs in the relevant country(ies) for purposes of this Agreement, and (iii) Legacy, its Affiliate, and Legacy Licensees shall no longer have any right to manufacture, use, sell, or import any CDC or Derivative thereof Covered by such Patent Rights in the relevant country(ies); and (III) Legacy will solicit Primary’s advice and review of such applications and important prosecution matters related thereto in reasonably sufficient time prior to filing thereof, and will take into account Primary’s reasonable comments related thereto. Subject to Sections 7.2(b) and 7.2(c), Legacy shall bear all reasonable, documented expenses incurred by it with respect to the filing, prosecuti...

Filing, Prosecution and Maintenance. 6.1 Pursuant to Article 4.1.2, the Company shall reimburse Ovamed or may reimburse UIRF directly (at the Company’s option) for all reasonable expenses Ovamed has paid to UIRF under the License Agreement in connection with the preparation, filing, prosecution and maintenance of Patent Rights and the Company shall reimburse Ovamed for monies Ovamed has paid to UIRF under the License Agreement for all such future expenses upon receipt of invoices from Ovamed and/or UIRF. It is understood that UIRF shall take responsibility for the preparation, filing, prosecution and maintenance of any and all patent applications and patents included in Patent Rights. 6.2 Ovamed and the Company shall cooperate fully in the preparation, filing, prosecution and maintenance of Patent Rights and of all patents and patent applications licensed to the Company hereunder, executing all papers and instruments or causing members of UIRF to execute such papers and instruments as to enable UIRF to apply for, to prosecute and to maintain

Filing, Prosecution and Maintenance. CDS shall have primary responsibility for and control over the preparation, filing, prosecution and maintenance of (a) any of the CDS Existing Patent Rights, (b) any Patent Rights included within the CDS Improvements, and (c) any Patent Rights included within the Alimera Improvements that fall within the definition of or relate to the CDS Core Technology (collectively, the “CDS-Prosecuted Patent Rights”). For CDS-Prosecuted Patent Rights, CDS shall have the authority to select patent counsel, and to determine the form and content of such prosecution documents and to make all decisions regarding whether to file, prosecute and maintain patents and patent applications, and in which countries to do so.

Filing, Prosecution and Maintenance. Licensor shall be responsible for and shall use commercially reasonable efforts to file, prosecute and maintain all trademark and related registrations and registration applications for the Licensed Marks and the Licensed Domain Names in the Territory. Should Licensor desire to cease prosecuting or maintaining any Licensed ▇▇▇▇ or Licensed Domain Name in the Territory, Licensor shall provide Licensee with reasonably prior written notice thereof and the parties shall discuss the conditions, if any, under which Licensor will continue prosecuting and maintaining said Licensed ▇▇▇▇ or Licensed Domain Name in the Territory. If the parties are unable to agree on conditions under which Licensor will continue prosecuting and maintaining any Licensed ▇▇▇▇ or Licensed Domain Name, Licensor agrees to assign to Licensee all of Licensor's rights, title and interest into said Licensed ▇▇▇▇ or Licensed Domain Name in the Territory, whereupon Licensor shall be relieved from its obligations under this Section 6 with respect to said Licensed ▇▇▇▇ or Licensed Domain Name.

Filing, Prosecution and Maintenance. Alimera shall have primary responsibility for and control over the preparation, filing, prosecution and maintenance of any Patent Rights included within Alimera Improvements that are not CDS-Prosecuted Patent Rights (“Alimera-Prosecuted Patent Rights”). For Alimera-Prosecuted Patent Rights, Alimera shall have the authority to select patent counsel, and to determine the form and content of such prosecution documents and to make all decisions regarding whether to file, prosecute and maintain patents and patent applications, and in which countries to do so. Alimera shall be solely responsible for Alimera Patent Costs and such costs shall be neither Direct Development Costs nor Direct Commercialization Costs. Alimera shall provide CDS with copies of all official correspondence (including, but not limited to, applications, office actions, responses, etc.) relating to prosecution and maintenance of Alimera-Prosecuted Patent Rights.

Filing, Prosecution and Maintenance. Each of Sankyo and GelTex shall be responsible for the reasonable and diligent filing, prosecution, maintenance and patent term extension of all patent applications and patents which make up its Patent Rights, except that the Parties will determine, on a case-by-case basis, which Party shall be responsible for the filing, prosecuting, maintenance and patent term extension of all patent applications and patents covering [ * ]. For so long as any of the license grants set forth in Section 3.1 hereof remain in effect in the Territory, GelTex agrees to file and prosecute patent applications, obtain patent term extensions, where available, and maintain the patents covering its Patent Rights in the Territory. GelTex shall consult with and keep Sankyo informed of all material issues relating to the preparation and filing, prosecution and maintenance of such patent applications and patents.

Filing, Prosecution and Maintenance of Patent Rights claiming Other Research Program Inventions.