Patent Maintenance Clause Samples
A Patent Maintenance clause outlines the responsibilities and procedures for keeping a patent in force, typically by ensuring that required fees are paid and necessary filings are made with patent offices. In practice, this clause may specify which party is responsible for paying maintenance fees, handling renewals, and managing any related administrative tasks, especially in agreements involving multiple stakeholders or licensees. Its core function is to prevent the unintentional lapse or expiration of patent rights, thereby protecting the value of the intellectual property and clarifying obligations between parties.
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Patent Maintenance. (a) Scynexis shall be responsible to R-Pharm for preparation and prosecution of all patent applications and the maintenance of all patents relating to the Licensed Technology (including the Patents) throughout the Territory, it being acknowledged and agreed that such prosecution and maintenance may be performed and/or be managed by Merck, the current owner of the Patents. In connection therewith, Scynexis shall consult with R-Pharm in order to assure that all future filings with respect to the Patents are made in a timely manner and identify the relevant countries in the Territory, to the extent that Scynexis can do so. Scynexis shall pay, or cause to be paid, all costs and expenses of filing, prosecuting and maintaining the Patents and the patents covering Inventions owned by Scynexis in the Territory.
(b) In connection with the development of the Compound and/or the Product, in the Territory, each Party agrees promptly to provide to the other Party a complete written disclosure of any Invention made by such Party. The Territory Development Committee shall determine whether any Invention owned jointly by Scynexis and R-Pharm is patentable and whether filing a patent application is economically justifiable, and if so, shall proceed with the preparation and prosecution of a patent application covering any such Invention. R-Pharm shall determine whether any Invention owned solely by R-Pharm is patentable and whether filing a patent [*] = 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 406 of the Securities Act of 1933, as amended. application is economically justifiable, and if so, shall proceed with the preparation and prosecution of a patent application covering any such Invention. Scynexis shall determine whether any Invention owned solely by Scynexis is patentable and whether filing a patent application is economically justifiable, and if so, shall proceed with the preparation and prosecution of a patent application covering any such Invention.
Patent Maintenance. As provided in the TDA, as between BMS and Penn, Penn will have exclusive control (subject to reasonable communication on a periodic basis with BMS regarding the status of the prosecution of pending patent applications within the Assigned BMS Patents, including amendments to claim scope) of the prosecution and maintenance of the Assigned BMS Patents, including regarding any extensions, interferences, oppositions, reissue proceedings and re-examinations with respect thereto. As between Penn and Company, Company will manage the preparation, prosecution and maintenance of the Penn Patent Rights and will make all decisions with regards thereto (including regarding any interferences, oppositions, reissue proceedings and re-examinations with respect thereto), and with respect to the Assigned BMS Patents, Penn hereby delegates its prosecution and maintenance control under Section 6.1(a) of the TDA to Company, provided that Company and Penn have entered into with patent counsel a Client and Billing Agreement in substantially the form attached as Exhibit E. Company will select patent counsel reasonably acceptable to Penn to prepare, prosecute and maintain the Penn Patent Rights, Penn and Company will be the client of that counsel, Penn will receive copies of all invoices, payments and material correspondence relating to the prosecution of the Penn Patent Rights, and Penn retains the right to advise Company regarding such activities. Penn will promptly provide to Company all papers concerning the ownership, prosecution and maintenance of the Assigned BMS Patents Penn receives from BMS (including all assignment documents required by Article 3.1 of the TDA).
Patent Maintenance. Duska will retain control over, and will diligently prosecute and maintain at its sole expense the patents and patent applications included in the Assigned Invention Property. Duska will consult with the Inventors prior to the filing of any patent application in any jurisdiction, but decisions as to the filing of patent applications or maintenance of patents in any jurisdiction will be made by Duska at its sole discretion. Duska will furnish to the Inventors copies of all documents relevant to any such prosecution and maintenance. Duska will have the right at its sole discretion to transfer the prosecution and maintenance of patents and patent applications to any experienced patent attorney of Duska’s choosing.
Patent Maintenance. All annuity and maintenance fees that are necessary in order to keep the Patents in force as of the Effective Date have been paid by Seller, and no payment of annuities or fees, or papers to be filed in patent offices, are required to be made within the three-month period after the Effective Date.
Patent Maintenance. SYSTEM shall maintain at least one U.S. patent resulting from the prosecution described hereinabove.
Patent Maintenance. 00 LICENSEE, and not LICENSOR, shall amend, prosecute and maintain LICENSED PATENTS at its own expense subject to provisions of Paragraph 6.01, below. Licensee agrees to send copies of all correspondence (past and future) to and from any patent office to LICENSOR and to keep LICENSOR informed of the status of all patents and patent applications.
Patent Maintenance. Penn controls the preparation, prosecution and maintenance of the Penn Patent Rights and the selection of patent counsel, with input from Company. If, however, Company desires to manage the preparation, prosecution and maintenance of the Patent Rights with input from Penn, and with agreement from Penn, which will not be unreasonably withheld, and Company is the sole licensee to the Penn Patent Rights, then Company and Penn will enter into with patent counsel a Patent Management Agreement in the form attached as Exhibit ▇. ▇▇▇▇ will consider Company’s reasonable request to select alternate patent counsel. For clarity, for so long as there is more than one licensee to Penn Patent Rights, Penn does not typically agree to a Patent Management Agreement but may consider doing so if all licensees to the Penn Patent Rights agree thereto.
Patent Maintenance. Penn controls the preparation, prosecution and maintenance of the Penn Patent Rights and the selection of patent counsel, with input from Company. If, however, Company decides to manage the preparation, prosecution and maintenance of the Penn Patent Rights with input from Penn, then Company and Penn will enter into with patent counsel a Client and Billing Agreement in the form attached as Exhibit E. As of the date of this Agreement, Company and Penn have entered into a Client and Billing Agreement.
Patent Maintenance. Rockefeller controls the preparation, prosecution and maintenance of the Rockefeller Patent Rights and the selection of patent counsel, with input from Company. Company will be copied on, and allowed to comment upon, all substantive issues in the patent prosecution.
Patent Maintenance. (a) Medistem shall have full responsibility for, and shall control the preparation and prosecution of, all patent applications and the maintenance of all patents relating to the Licensed Technology (including the Patents) throughout the Territory. In connection therewith, Medistem shall consult with Licensee in order to assure that all future filings with respect to the Patents are made in a timely manner and identify the relevant countries in the Territory, to the extent that Medistem can do so. Medistem shall pay all costs and expenses of filing, prosecuting and maintaining the Patents and the patents covering Inventions owned by Medistem in the Territory.
(b) Medistem shall select qualified independent patent counsel to file and prosecute all patent applications pursuant to Section 7.2(a). Medistem shall provide copies to Licensee of any filings made to, and written communications received from, any patent office relating, in whole or in part, to the Licensed Claims.
(c) Each Party agrees promptly to provide to the other Party a complete written disclosure of any Invention made by such Party. Medistem shall determine whether any Invention Is patentable and whether filing a patent application is economically justifiable, and if so, shall proceed with the preparation and prosecution of a patent application covering any such Invention.
(d) Each Party agrees to cooperate with the other Party to execute all lawful papers and instruments, to make all rightful oaths and declarations and to provide consultation and assistance as may be necessary in the preparation, prosecution, maintenance and enforcement of all such patents and patent applications.