Common use of Joint Patents Clause in Contracts

Joint Patents. The Parties shall decide on a Joint Invention-by-Joint Invention basis which Party will have the first right to prosecute and maintain Joint Patents (such Party, the “Responsible Party”), at its sole cost and expense and by reputable, outside counsel mutually agreed to by the Parties, such agreement not to be unreasonably withheld, conditioned or delayed. The Responsible Party shall keep the other Party reasonably informed of progress with regard to the prosecution and maintenance of Joint Patents for which the *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Responsible Party is responsible under this Section 5.2.5, and shall consult with, and consider in good faith the requests and suggestions of, the other Party. In the event that the Responsible Party desires not to file, or desires to abandon or cease prosecution or maintenance of, any Joint Patent in any country, the Responsible Party shall provide written notice to the other Party of such intention promptly after the Responsible Party makes such determination (which notice shall be given no later than [***] prior to the next deadline for any action that must be taken with respect to such Joint Patent in the relevant patent office). In such case, at the other Party’s sole discretion, upon written notice to the Responsible Party from the other Party, the other Party may elect to continue prosecution or maintenance of any such Joint Patent, at its sole cost and expense and by counsel of its own choice.

Joint Patents. The Parties parties shall decide on a Joint Invention-by-Joint Invention basis mutually determine which Party will have party shall be responsible for the first right to prosecute and maintain Joint Patents (such Partypreparation, the “Responsible Party”)filing, at its sole cost and expense and by reputable, outside counsel mutually agreed to by the Parties, such agreement not to be unreasonably withheld, conditioned or delayed. The Responsible Party shall keep the other Party reasonably informed of progress with regard to the prosecution and maintenance of Joint Patents, in appropriate countries throughout the world. Replidyne and Forest shall share equally the costs for preparation, filing, prosecuting and/or maintaining Joint Patents, except as provided below. The prosecuting party shall consult with the other party as to the preparation, filing, prosecution and maintenance of the Joint Patents for which reasonably prior to any deadline or action with the *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Responsible Party is responsible under this Section 5.2.5U.S. Patent & Trademark Office or any foreign patent office, and shall consult with, and consider in good faith the requests and suggestions of, furnish to the other Partyparty copies of all relevant documents reasonably in advance of such consultation. In If the event that the Responsible Party desires not to file, or prosecuting party desires to abandon or cease prosecution or maintenance of, any Joint Patent in for which it is responsible, or if the prosecuting party later declines responsibility for any countryJoint Patent, the Responsible Party prosecuting party shall provide reasonable prior written notice to the other Party party of such intention promptly after the Responsible Party makes such determination to abandon or decline responsibility (which notice shall shall, in any event, be given no later than [***] sixty (60) days prior to the next deadline for any action that must may be taken with respect to such Joint Patent with the U.S. Patent & Trademark Office or other patent office in the relevant patent officeTerritory). In such case, and the other party shall have the right, at the other Party’s sole discretionits expense, upon written notice to the Responsible Party from the other Partyprepare, the other Party may elect to continue prosecution or maintenance of any file, prosecute, and maintain such Joint Patent, at its sole cost and expense and by counsel in which case the prosecuting party shall assign all of its own choiceright, title and interest in such Joint Patent to the other party, and, upon such assignment, such Joint Patent(s) shall become the sole property of the other party, subject only to the licenses granted herein.

Joint Patents. The Parties parties shall decide mutually agree, on a Joint Invention-by-Joint Invention basis basis, which Party of the parties will have the first right and responsibility to prepare, file, prosecute and maintain Joint Patents claiming a Joint Invention. The party with such first right and responsibility (such the “First Party”) shall use counsel reasonably acceptable to the other party, and, unless otherwise agreed by the parties in writing, the “Responsible Party”)parties shall share equally the reasonable and documented expenses of preparing, at its sole cost filing, prosecuting and expense and by reputable, outside counsel mutually agreed to by the Parties, maintaining such agreement not to be unreasonably withheld, conditioned or delayedJoint Patents. The Responsible First Party shall consult with the other party as to the preparation, filing, prosecution and maintenance of the Joint Patents reasonably prior to any deadline or action with any patent office, and shall furnish to the other party copies of all relevant drafts and documents reasonably in advance of such consultation. The First Party shall keep the other Party party reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of such Joint Patents for which the *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Responsible Party is responsible under this Section 5.2.5Patents, and shall consult with, and consider in good faith the requests and suggestions of, provide to the other Partyparty copies of all material patent office submissions within a reasonable amount of time following submission thereof by such party. In the event that the Responsible First Party desires not to file, or desires to abandon or cease prosecution or maintenance of, of any such Joint Patent in any countryPatent, the Responsible First Party shall provide written notice to the other Party party of such intention to abandon promptly after the Responsible First Party makes such determination (which notice shall be given no later than [***] 90 days (or for ▇▇▇▇▇-▇▇▇▇▇▇ actions, or the equivalent thereof, 30 days) prior to the next deadline for any action that must be taken with respect to such Joint Patent in the relevant patent office). In such case, at the other Party’s sole party shall have the right, in its discretion, exercisable upon written notice to the Responsible Party first party delivered no later than 30 days after receipt of notice from the other Partyfirst party, the other Party may elect to continue assume responsibility for prosecution or and maintenance of any such Joint Patent, at its sole cost and expense and by counsel of its own choice.

Joint Patents. The Parties shall decide on a Joint Invention-by-Joint Invention basis mutually determine which Party will have shall be responsible for obtaining, prosecuting and/or maintaining Joint Patents, in appropriate countries throughout the first right to prosecute and maintain Joint Patents (such Party, the “Responsible Party”), at its sole cost and expense and by reputable, outside counsel mutually agreed to by the Parties, such agreement not to be unreasonably withheld, conditioned or delayedworld. The Responsible prosecuting Party shall keep consult with the other Party reasonably informed of progress with regard as to the preparation, filing, prosecution and maintenance of such Joint Patents for which reasonably prior to any deadline or action with the **U.S. Patent & Trademark Office or any foreign patent office, and [ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***]BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Responsible Party is responsible under this Section 5.2.5, and shall consult with, and consider in good faith the requests and suggestions of, furnish to the other PartyParty copies of all relevant documents reasonably in advance of such consultation. In Exelixis and Sankyo shall share equally the event costs for filing, prosecuting and/or maintaining such Joint Patents throughout the world; provided, however, that either Party may decline to bear its share of the Responsible Party desires not costs and expenses to file, or desires to abandon or cease prosecution or maintenance of, prosecute and/or maintain any particular Joint Patent in any countrycountries. In that case the other Party may undertake the responsibility for filing, prosecuting and/or maintaining such Joint Patent at its own expense, and if it does so, the Responsible declining Party shall provide written notice assign to the other Party of such intention promptly after the Responsible Party makes such determination (which notice shall be given no later than [***] prior all its right, title and interest to the next deadline for any action that must be taken with respect to such Joint Patent in the relevant patent office). In such case, at the other Party’s sole discretion, upon written notice to the Responsible Party from the other Party, the other Party may elect to continue prosecution or maintenance of any such Joint PatentPatent(s), at its and, upon such assignment, such Joint Patent(s) shall become the sole cost and expense and by counsel property of its own choiceother Party.

Joint Patents. The Parties shall decide determine, on a Joint Inventioncase-by-Joint Invention basis case basis, which Party will shall have the first right to prosecute responsibility, through counsel of its choosing, for obtaining, prosecuting (including any interferences, reissue proceedings and maintain re-examinations) and maintaining a Joint Patents Patent throughout the world (such Party, the “Responsible "PROSECUTING PARTY"). In selecting the Prosecuting Party”, the Parties shall consider the relative contributions of each Party to the Joint Intellectual Property Rights and the expected efficiencies of the patent prosecution procedures of the respective Parties. The Prosecuting Party shall have the sole right to determine in which countries to obtain, prosecute and maintain the Joint Patents. The other Party shall have the right to request that the Prosecuting Party obtain, prosecute and maintain a Joint Patent in a particular country. If the Prosecuting Party declines, or otherwise fails, to initiate any such requested action with respect to a Joint Patent within sixty (60) days (or, if after initiating any requested action, the Prosecuting Party at any time thereafter fails to diligently pursue such action), at its sole in each case the other Party shall have the right to take such action with respect to such Joint Patent. The Parties shall, and shall cause their respective Affiliates, as applicable, to assist and cooperate with one another in, and share equally the cost and expense and by reputable, outside counsel mutually agreed to by the Parties, such agreement not to be unreasonably withheld, conditioned or delayed. The Responsible Party shall keep the other Party reasonably informed of progress with regard to the prosecution and maintenance of Joint Patents for which the *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Responsible Party is responsible under this Section 5.2.5, and shall consult with, and consider in good faith the requests and suggestions of, filing, prosecuting and maintaining the other PartyJoint Patents. In Notwithstanding the event that above, either Party may decline to pay its share of the Responsible Party desires not to filecosts and expenses for filing, or desires to abandon or cease prosecution or maintenance of, prosecuting and maintaining any Joint Patent in any countrya particular country or particular countries, in which case the Responsible declining Party shall provide written notice assign, and shall cause its Affiliates to assign, to the other Party all of such intention promptly after the Responsible Party makes such determination (which notice shall be given no later than [***] prior their rights, titles and interests in and to the next deadline for any action that must be taken with respect to such Joint Patent in the relevant patent office). In such case, at the other Party’s sole discretion, upon written notice to the Responsible Party from the other Party, the other Party may elect to continue prosecution country or maintenance of any countries whereupon such Joint PatentPatent shall become a Licensee Patent owned solely by Licensee or a Licensed Patent in such country or countries, at its sole cost and expense and by counsel of its own choiceas - 41 - the case may be.

Joint Patents. The Parties YouHealth shall decide on a Joint Invention-by-Joint Invention basis which Party will have the first right right, but not the obligation, to prosecute and maintain Joint Patents (such Party, in the “Responsible Party”)YouHealth Territory, at its sole cost and expense and by reputablecounsel of its own choice, outside and Acucela shall have the first right, but not the obligation, to prosecute and maintain Joint Patents in the Acucela Territory, at its sole cost and expense and by counsel mutually agreed to by the Parties, such agreement not to be unreasonably withheld, conditioned or delayedof 29. The Responsible [†] DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION its own choice. Each Party shall keep the other Party reasonably informed of progress with regard to the prosecution and maintenance of Joint Patents for which such Party (the *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. “Responsible Party Party”) is responsible under this Section 5.2.5responsible, and shall consult with, and consider in good faith the requests and suggestions of, the other Party. In the event that the Responsible Party desires not to file, or desires to abandon or cease prosecution or maintenance of, any Joint Patent in any countrycountry of such Party’s Territory, the Responsible Party shall provide written notice to the other Party of such intention promptly after the Responsible Party makes such determination (which notice shall be given no later than [***] 90 days prior to the next deadline for any action that must be taken with respect to such Joint Patent in the relevant patent office). In such case, at the other Party’s sole discretion, upon written notice to the Responsible Party from the other Party, the other Party may elect to continue prosecution or maintenance of any such Joint Patent, at its sole cost and expense and by counsel of its own choice.

Joint Patents. The Parties [***] shall decide on a Joint Invention-by-Joint Invention basis which Party will have the first right right, but not the obligation, to prosecute and maintain Joint Patents (such Partycontrol the preparation, the “Responsible Party”)filing, at its sole cost and expense and by reputableprosecution, outside counsel mutually agreed to by the Parties, such agreement not to be unreasonably withheld, conditioned or delayed. The Responsible Party shall keep the other Party reasonably informed of progress with regard to the prosecution and maintenance (including any interferences, derivation proceedings, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of validity or enforceability challenges) of all Joint Patents Patents, except for which the *** CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY those that are [***], HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED. Responsible Party is responsible under this Section 5.2.5, and shall consult with, and consider in good faith the requests and suggestions of, the other Party. In the event that the Responsible Party desires not to file, or desires to abandon or cease prosecution or maintenance of, any Joint Patent in any country, the Responsible Party shall provide written notice to the other Party of such intention promptly after the Responsible Party makes such determination (which notice shall be given no later than [***] prior to the next deadline for any action that must be taken with respect to such Joint Patent in the relevant patent office). In such case, at the other Party’s sole discretion, upon written notice to the Responsible Party from the other Party, the other Party may elect to continue prosecution or maintenance of any such Joint Patentworldwide, at its sole own cost and expense and by counsel of its own choice, but which is reasonably acceptable to [***]. [***] shall have the first right, but not the obligation, to control the preparation, filing, prosecution, and maintenance (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of validity or enforceability challenges) of all Joint Patents worldwide that [***], at its own cost and by counsel of its own choice, but which is reasonably acceptable to [***]. Each Party shall keep the other Party informed of the status of each such Joint Patent for which it is controlling prosecution, and shall reasonably consider the other Party’s suggestions or recommendations concerning the preparation, filing, prosecution, and maintenance thereof. If, during the Term, the Party having the first right under this Section 8.2(b) intends not to file or continue prosecuting or maintaining a Joint Patent, such Party shall notify the other Party of such intention at least thirty (30) days prior to any applicable deadline, and the other Party shall have the right, but not the obligation, to assume responsibility for the prosecution and maintenance of such Joint Patent, in the joint name of the Parties and at the expense of the Party assuming control.