Filing, Prosecution and Maintenance Clause Samples

Filing, Prosecution and Maintenance. Each Licensor shall have the first right, but not the obligation, to file, prosecute and maintain, at its cost and expense, all patents, patent applications, and know-how licensed to the Licensee pursuant to Article II (“Licensed Patents”); provided, however, that if a Licensor elects not to file, prosecute or maintain any Licensed Patent, and has not otherwise intentionally elected to prevent another party from doing so, then such Licensor shall so notify the Licensee in writing wherever possible according to the following terms: (A) For abandonments: a. By the later of (i) 60 days in advance of the Abandonment Deadline, or (ii) 5 days after receipt of notification of an applicable action, Licensor shall notify Licensee of the approaching Abandonment Deadline, and b. Within 5 days of making the decision to abandon the application, and not later than 30 days in advance of the Abandonment Deadline, Licensor shall notify Licensee of the decision to abandon the application. (B) For elections not to file, validate, or designate in additional countries, Licensor shall notify Licensee of the approaching deadline and shall provide a list of countries in which Licensor intends to file, validate, or designate, by the later of (i) 60 days in advance of the deadline, or (ii) 5 days after receipt of notification of an applicable event. Upon receipt of such notice, the Licensee shall have the right, but not the obligation, at its cost and expense, to pursue the filing or additional filing or support the continued prosecution or maintenance of such Licensed Patent. If the Licensee does elect to take such action, then Licensee shall notify Licensor of such election, and Licensor shall reasonably cooperate with Licensee, upon Licensee’s request and at Licensee’s cost and expense, in connection with such filing or additional filing or continued prosecution or maintenance, as applicable, including, if requested by Licensee, by assigning to Licensee all of Licensor’s right, title and interest in and to any such Licensed Patent owned by Licensor or any of its Group to the extent it has the right to do so.

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. Audentes acknowledges and agrees that all preparation, filing, prosecution and maintenance of the Licensed Patent Rights shall be the responsibility of PBS.

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 all patent term extensions 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 and maintenance of all patent applications and patents covering [ * ]. For so long as any of the license grants set forth in Section 3.2.2 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 any such country 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. The Collaboration Management Team, or a Patent Team ("PT") if designated, shall determine which Party shall have primary responsibility for filing, prosecuting and maintaining Patent applications with respect to Joint Inventions. Unless otherwise agreed, all reasonable costs incurred with respect to the filing, prosecution and maintenance of Patent applications and Patents covering Joint Inventions, including fees and expenses of independent patent counsel approved by the PT, shall be borne equally by the Parties. The responsible Party shall consult with the PT prior to taking any material action with respect to any such patent application or Patent. Without limiting the generality of the foregoing, the PT must review and approve the priority patent application covering a Joint Invention prior to filing, and the responsible Party shall not make any written or oral contact with any U.S. or foreign patent agency without in each case receiving the prior approval of the PT. The responsible Party shall provide the PT with copies of all such patent applications, correspondence to or from U.S. or foreign patent agencies, and any other related documentation. In addition, the other Party shall have the right to participate fully in the formation and implementation of Patent strategy, including, without limitation, the right to participate in any meetings or telephone conferences with U.S. and foreign patent agencies. In the event that PathoGenesis or Chiron elects not to file a patent application on a Joint Invention in any country, or decides to abandon any pending application or granted patent on a Joint Invention in any country, it shall provide adequate notice to the other Party and give the other Party the opportunity to file or maintain such application or Patent at its own expense. In the event the other Party shall thereupon file or maintain such application or Patent, the inventing Party shall assign ownership thereof to the other Party.