Patent Prosecution and Maintenance Sample Clauses
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Patent Prosecution and Maintenance. 8.1 Subject to the remaining Sections of this Article 8, LICENSEE shall bear the cost of all reasonable, documented patent expenses, [***], associated with the preparation, filing, prosecuting, issuance and maintenance of U.S. Patent applications and U.S. Patents included within the PATENT RIGHTS. Such filings and prosecution corresponding to UNIVERSITY INVENTIONS shall be by counsel of UNIVERSITY’s choosing and shall be in the name of UNIVERSITY. UNIVERSITY shall keep LICENSEE advised as to the prosecution of such applications by forwarding, and directing UNIVERSITY’s patent counsel to forward, to LICENSEE copies of all official correspondence, (including, but not limited to, Applications, Office Actions, responses, etc.) relating thereto. LICENSEE shall have the right to comment and advise UNIVERSITY and its counsel as to the conduct of such prosecution and maintenance, provided, however, that UNIVERSITY shall have the right to make the final decisions for all matters associated with such prosecution and maintenance. Notwithstanding the foregoing, UNIVERSITY shall not abandon prosecution of any patent application or maintenance of any issued patent without first, to the extent reasonably possible, giving LICENSEE notice at least [***] ([***]) days prior to the date on which such patent application or patent will become abandoned, and shall allow LICENSEE to assume prosecution of any such patent application, or maintenance of any such patent, at LICENSEE’s own expense and with counsel of its choosing and with LICENSEE having the final decision for all matters associated with prosecution and maintenance. If LICENSEE assumes prosecution of any such patent application or maintenance of any such patent, LICENSEE’s obligations for payment under Article 3 based upon such patent application or patent shall terminate at the time that LICENSEE assumes prosecution or maintenance of such patent.
8.2 UNIVERSITY shall, [***], keep LICENSEE apprised in writing and in advance of incurring any costs with respect to the filing, prosecution, and or maintenance of any PATENT RIGHTS. By concurrent written notification to UNIVERSITY, LICENSEE may elect not to pay expenses associated with prosecuting or maintaining any U.S. PATENT RIGHTS corresponding to UNIVERSITY INVENTIONS, provided that LICENSEE pays for all reasonable, documented costs incurred up to UNIVERSITY’s receipt of such notification, to the extent LICENSEE was provided reasonable advance notice of such costs (or ...
Patent Prosecution and Maintenance. 17.1 As long as the Licensee has paid patent costs as provided for in this Article, The Regents shall diligently endeavor to prosecute and maintain the United States and foreign patents comprising Regents' Patent Rights using counsel of its choice, and The Regents shall provide the Licensee with copies of all relevant documentation so that the Licensee may be informed of the continuing prosecution and the Licensee agrees to keep this documentation confidential. The Regent' counsel will take instructions only from The Regents, and all patents and patent applications under this Agreement will be assigned solely to The Regents.
17.2 The Regents shall use all reasonable efforts to amend any patent application to include claims reasonably requested by the Licensee to protect the products contemplated to be sold under this Agreement.
17.3 The Licensee shall apply for an extension of the term of any patent included within Regents' Patent Rights if appropriate under the Drug Price Competition and Patent Term Restoration Act of 1984 and/or European, Japanese and other foreign counterparts of this Law. The Licensee shall prepare all documents, and The Regents agrees to execute the documents and to take additional action as the Licensee reasonably requests in connection therewith.
17.4 If either party receives notice pertaining to infringement or potential infringement of any issued patent included within Regents' Patent Rights under the Drug Price Competition and Patent Term Restoration Act of 1984 (and/or foreign counterparts of this Law), that party shall notify the other party within ten (10) days after receipt of notice of infringement.
17.5 The Licensee shall bear the costs of preparing, filing, prosecuting and maintaining all United States and foreign patent applications contemplated by this Agreement. Costs billed by The Regents' counsel will be rebilled to the Licensee and are due within thirty (30) days of
Patent Prosecution and Maintenance. 10.1 THE REGENTS will diligently prosecute and maintain the U.S. Licensed Patents using counsel of its choice. The Licensed Patents are held in the name of THE REGENTS.
10.2 THE REGENTS will pay costs of preparing, filing, prosecuting, and maintaining the U.S. Licensed Patents.
10.3 LICENSEE will have the right to request that THE REGENTS obtain patent protection on Licensed Patents in foreign countries if available. LICENSEE must notify THE REGENTS within seven (7) months of the filing of the corresponding United States application of its decision to obtain foreign patents. This notice concerning foreign filing will be in writing and must identify the countries desired. The absence of such a notice to THE REGENTS will be considered an election not to secure foreign rights.
10.4 After execution of this Agreement, the expense for preparation, filing and prosecuting of all foreign patent applications filed at LICENSEE's request, as well as the maintenance of all resulting patents, will be shared equally among the LICENSEES that request license rights under such foreign patents. Such patents will be held in the name of THE REGENTS and will be obtained using counsel of THE REGENTS' choice.
10.5 LICENSEE's obligation to underwrite and to pay foreign patent prosecution costs will continue for so long as this Agreement remains in effect, provided, however, that LICENSEE may terminate its obligations with respect to any given patent application or patent in any country upon thirty (30) days' written notice to THE REGENTS. THE REGENTS will use its best efforts to curtail patent costs when such a notice is received from LICENSEE. THE REGENTS may continue prosecution and/or maintenance of such application(s) or patent(s) at its sole discretion and expense; provided, however, that LICENSEE will have no further right or licenses thereunder.
10.6 THE REGENTS will have the right to file patent applications at its own expense in any country in which LICENSEE has not elected to secure patent rights, and such applications and resultant patents will not be subject to this Agreement.
Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 3 shall control the prosecution and maintenance of any patent or patent application included within Scripps Patent Rights. Subject to the requirements, limitations and conditions set forth in this Agreement, Scripps shall direct and control (i) the preparation, filing and prosecution of the United States and foreign patent applications within Scripps Patent Rights (including any interferences and foreign oppositions) and (ii) maintain the patents issuing therefrom. Scripps shall select the patent attorney, subject to Licensee's written approval, which approval shall not be unreasonably withheld. Both parties hereto agree that Scripps may, at its sole discretion, utilize Scripps' Office of Patent Counsel in lieu of outside counsel for patent prosecution and maintenance described herein, and the fees and expenses incurred by Scripps with respect to work done by such Office of Patent Counsel shall be paid as set forth below. Licensee shall have full rights of consultation with the patent attorney so selected on all matters relating to Scripps Patent Rights. Scripps shall use its best efforts to implement all reasonable requests made by Licensee with regard to the preparation, filing, prosecution and/or maintenance of the patent applications and/or patents within Scripps Patent Rights.
Patent Prosecution and Maintenance. For all Institute-Funded Inventions for which patent protection is pursued, RECIPIENT shall provide an annual written report to the INSTITUTE regarding the status of pending applications and issued patents that are Institute-Funded IPR.
Patent Prosecution and Maintenance. The parties agree that they will coordinate with each other in all reasonable respects the worldwide prosecution of all patents and patent applications relating to this Agreement, subject to the provisions of this Section 11.4. PRAECIS shall, at its expense, diligently pursue the filing, prosecution and maintenance of all patents and patent applications included in the Intellectual Property Rights and the PPI Licensed Rights (except for Improvements owned exclusively by Synthelabo) in all Territory Countries where protection of intellectual property rights in general is available, Synthelabo reasonably requires such protection and such protection is available, and PRAECIS shall bear all costs associated therewith. PRAECIS shall furnish Synthelabo with copies of any patent application concerning the Intellectual Property Rights sufficiently in advance of the anticipated filing date therefor (but in no event less than 20 business days before filing) so as to give Synthelabo a reasonable opportunity to review and comment thereon. PRAECIS shall also furnish copies to Synthelabo of all communications to and from United States and foreign patent offices regarding patents or patent applications relating to this Agreement within a reasonable time prior to filing such communication or promptly following the receipt thereof. PRAECIS shall reasonably consider any comments Synthelabo may have related to such patent applications or communications. Each of Synthelabo and PRAECIS shall have the right, at its expense, to file, prosecute and 77 maintain patents in all countries on Improvements owned solely by it. Each party shall have the reasonable right to review and comment on such filings by the other party and all patent office communications related thereto to the same extent as Synthelabo is permitted by this Section 11.4 with respect to filings made by PRAECIS. PRAECIS shall designate Synthelabo its European patent agent, and shall deliver any power of attorney required to give effect to such designation, in order that Synthelabo may, and Synthelabo agrees to, implement and diligently carry out an accelerated procedure to obtain a European search report and the first official letter from the European Patent Office with respect to the patentability of PPI-149 and the formulation, respectively, described in the European patent applications to be filed based on the respective Material Patent Applications (as defined in Section 1.36).
Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 8 shall control the prosecution of any patent application and maintenance of any patent included within Licensed Patent Rights. TSRI shall (a) direct and control the preparation, filing and prosecution of the United States and foreign patent applications within Licensed Patent Rights (including without limitation any reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences and foreign oppositions); and (b) maintain the patents issuing therefrom. TSRI shall select the patent attorney, subject to Licensee’s written approval, which approval shall not be unreasonably withheld. Both parties agree that TSRI shall have the right, at its sole discretion, to utilize TSRI’s Office of Patent Counsel in lieu of or in addition to independent counsel for patent prosecution and maintenance described herein, and the fees and expenses associated with the work done by such Office of Patent Counsel and/or independent patent counsel with regard to the preparation, filing and prosecution of patent applications and maintenance of patents included within Licensed Patent Rights shall be paid as set forth below. Licensee shall have full rights of consultation with the patent attorney so selected on all matters relating to Licensed Patent Rights. TSRI shall use its reasonable efforts to implement all reasonable and timely requests made by Licensee with regard to the preparation, filing, prosecution and/or maintenance of the patent applications and/or patents within Licensed Patent Rights.
Patent Prosecution and Maintenance. 9.2.1 SGI shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance of all SGI Patents. SGI shall, at its sole expense, prepare, file, prosecute and maintain such SGI Patents in good faith consistent with its customary patent policy and its reasonable business judgment, and shall consider in good faith the interests of Licensee in so doing.
9.2.2 Each Party shall be responsible for and shall control the preparation, filing, prosecution, grant and maintenance, of any patents and patent applications claiming Program Inventions owned solely by it in accordance with Section 9.1 and shall, at its sole expense, prepare, file, prosecute and maintain such patent rights in good faith consistent with its customary patent policy and its reasonable business judgment. Patents and patent applications claiming Program Inventions owned [***] in accordance with [***]([***]) shall be controlled, prepared, filed, prosecuted and maintained by [***] (a) [***], (b) [***] or (c) of [***]. The cost of such outside legal expenses shall be borne by the Party that controls such [***] under (a) or (b) above and [***] if such [***] is controlled by [***]. The Party responsible for filing and controlling patent prosecution and maintenance for Program Inventions shall provide to the other Party copies of any response, document or communication with patent authorities that could materially affect the scope of any patent or patent application covering Program Inventions or detrimentally effect the rights of the Parties in such inventions in any way, at least [***] prior to the planned submission or communication. Such other Party shall have the opportunity to comment on the response or document within such [***] period, which comments shall be reasonably considered by the Party primarily responsible for the prosecution.
9.2.3 If either Party decides not to continue prosecuting patent applications or not to maintain a patent claiming an invention assigned to such Party pursuant to Section 9.1 in whole or in part, then such Party shall promptly so notify the other Party (which notice shall be at least [***] before any relevant deadline for such patent application or patent). Thereafter, the other Party shall have the right to prosecute or maintain such patent application or patent, at such Party’s sole expense.
9.2.4 The Parties shall at all times fully cooperate in order to reasonably implement the foregoing provisions, such cooperation may incl...
Patent Prosecution and Maintenance. (a) Licensed Patents. Tracon shall have the sole (subject to Section 8.2(a)(ii)) right, but not the obligation, at its own expense, to control the preparation, filing, prosecution (including any interferences, reissue proceedings and reexaminations) and maintenance of the Licensed Patents. Tracon shall keep Santen reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of Licensed Patents including the countries in the Territory in which it intends to file, maintain or abandon a given Licensed Patent. Tracon will notify Santen of all warning letters, conflict proceedings, reexaminations, reissuance, oppositions, revocation proceedings or any other material challenge relating to a given Licensed Patent. Tracon will consult with, and consider in good faith the requests and suggestions of, Santen with respect to strategies for filing and prosecuting Licensed Patents. In the event that Tracon desires to abandon or cease prosecution or maintenance of any Licensed Patent, Tracon shall provide reasonable prior written notice to Santen of such intention (which notice shall, in any event, be given no later than sixty (60) days prior to the next deadline for any action that may be taken with respect to such Patent with the applicable patent office), and upon Santen’s written election provided no later than thirty (30) days after such notice from Tracon, Tracon shall continue prosecution and/or maintenance of such Patent at Santen’s direction and expense; provided, that Santen shall be allowed to offset its out-of-pocket costs for prosecuting and maintaining such Patents from the royalty and other payments due to Tracon under this Agreement. If Santen does not provide such election within thirty (30) days after such notice from Tracon or fails to pay for prosecution or maintenance of any Licensed Patent, if any, with respect to which it has previously made such election, Tracon may, in its sole discretion, continue prosecution and maintenance of such Patent or discontinue prosecution and maintenance of such Patent. The provisions of this Section 8.2(a) are subject to the rights of RPCI Licensor under the RPCI Agreement with respect to the RPCI Patents. With respect to Licensed Patents that have issued or may issue, a statement referencing the exclusive license granted to Santen pursuant to Section 2.1 shall be registered with the patent office in the countries designated by Santen, at Santen’s cost, as soon as is practicall...
Patent Prosecution and Maintenance. (a) Provided that LICENSEE has reimbursed Cornell for Patent Costs pursuant to Paragraph 3.2, Cornell shall diligently prosecute and maintain the United States and, if available. foreign patents, and applications in Patent Rights using counsel of its choice reasonably acceptable to LICENSEE. Cornell shall provide LICENSEE with copies of all relevant documentation relating to such prosecution and LICENSEE shall keep this documentation confidential. The counsel shall take instructions only from Cornell. and all patents and patent applications in Patent Rights shall be assigned solely to CU’ or Cornell.
(b) Cornell shall consider amending any patent application in Patent Rights to include claims reasonably requested by LICENSEE to protect the products contemplated to be sold as Licensed Products by LICENSEE under this Agreement.
(c) LICENSEE may elect to terminate its reimbursement obligations with respect to any patent application or patent in Patent Rights in any or all patented country(ies) upon three (3) months’ written notice to Cornell. Cornell shall use reasonable efforts to curtail further Patent Costs for such application or patent when such notice of termination is received from LICENSEE. Cornell, in its sole discretion and at its sole expense, may continue prosecution and maintenance of said application or patent, and LICENSEE shall have no further license with respect thereto. Non-payment of any portion of Patent Costs with respect to any application or patent in a country may be deemed by Cornell as an election by LICENSEE to terminate its reimbursement obligations with respect to such application or patent in that country. Cornell is not obligated to file, prosecute, or maintain Patent Rights outside of the Territory at any time or to file, prosecute, or maintain Patent Rights to which LICENSEE has terminated its License hereunder.
(d) LICENSEE shall apply for an extension of the term of any patent in Patent Rights if appropriate under the Drug Price Competition and Patent Term Restoration Act of 1984 and/or European, Japanese and other foreign counterparts of this law. LICENSEE shall prepare all documents for such application, and Cornell shall execute such documents and to take any other additional action as LICENSEE reasonably requests in connection therewith.