Patent Prosecution Maintenance and Infringement Clause Samples
The "Patent Prosecution, Maintenance and Infringement" clause defines the parties' rights and responsibilities regarding the filing, upkeep, and defense of patents related to the agreement. It typically outlines which party is responsible for prosecuting patent applications, paying maintenance fees, and taking action against potential infringers. For example, one party may be designated to handle all patent filings and bear associated costs, while the other may have rights to participate in infringement litigation. This clause ensures that valuable intellectual property is properly protected and maintained, and clarifies how infringement issues will be addressed, thereby reducing disputes and safeguarding the interests of both parties.
Patent Prosecution Maintenance and Infringement a. Licensor shall have the right to control the prosecution and maintenance of the Licensed Patents. Licensor shall provide Licensee with copies of all material correspondence and communications filed with or received from a patent office in connection with prosecution and maintenance of the Licensed Patents, and shall receive and consider in good faith suggestions and comments from Licensee on prosecution matters. Licensee shall reimburse Licensor for invoiced expenses incurred following the Effective Date of this Agreement in filing, prosecuting and maintaining Licensed Patents, including attorneys’ fees, the costs of any interference proceedings, reexaminations, or any other ex parte or inter partes administrative proceeding before patent offices, taxes, annuities, issue fees, working fees, maintenance fees and renewal charges, with payment from Licensee to Licensor for such reimbursements due ten (10) business days following an invoice from Licensor to Licensee for such expenses. The reimbursement obligation in the proceeding sentence is limited to a maximum of USD [***] in the aggregate during the term of this Agreement. If Licensee declines to pay Licensor for such amounts for Licensed Patents a particular country, its license under the Licensed Patents in such country shall terminate. Any prosecution costs as described above in excess of the [***] aggregate limit, shall be the Licensor’s obligation without disturbance to the rights granted to the Licensee under this Agreement. Licensor shall notify Licensee if it elects to abandon the prosecution of any patent application or maintenance of any patent within the Licensed Patents in any country in the Territory at least 30 days prior to the date on which such application or patent will lapse or go abandoned. Licensee shall then have the option, exercisable upon written notice to Licensor, to assume full responsibility, at Licensee’s discretion, cost and expense, for prosecution of such application or maintenance of such patent in such country. The exercise by the Licensee of this options shall not affect any other provision of this Agreement, including the obligation to make payments in Section 3, all of which remain in full force and effect.
b. Licensor shall have the right, but not the obligation, to enforce the Licensed Patents and prosecute infringers at its own expense when in its sole judgment such action may be reasonably necessary, proper, and justified.
c. If Licensee shall have supplied Lice...
Patent Prosecution Maintenance and Infringement. [*] = Certain confidential information contained in this document, marked by brackets, has been omitted because it is both (i) not material and (ii) would likely cause competitive harm to the company if publicly disclosed.
Patent Prosecution Maintenance and Infringement. Section 4.1
Patent Prosecution Maintenance and Infringement. 17.1 The party responsible for applying for and obtaining Patents (the "Responsible Party") involving the Tabletting Technology shall be Purepac and involving the Pellets, the Pellet Technology and any combination of the Pellet and Tabletting Technologies shall be Faulding. Each Responsible Party shall immediately furnish the other party with true copies of the Patent(s) concerned. Other than with respect to any Patents combining the Pellet and Tabletting Technologies (the "Combined Patents"), all expenses for the prosecution and maintenance of each of the aforementioned Patents shall be paid by the Responsible Party. The parties shall equally share the expenses for the prosecution and maintenance of the Combined Patents and the Combined Patents will be applied for in the names of both Faulding and Purepac. Each of the parties agrees to cooperate, as reasonable necessary with the party prosecuting the patent application, upon the request of such prosecuting party.
17.2 Each party will promptly notify the other party of any infringement or possible infringement by a third party of any of the Patents and any claim of litigation by a third party alleging invalidity of any of the Patents. Moreover, in the event of any claim of litigation by a third party alleging infringement by any of the Patents or if either party discovers that any of the Patents infringe, or may possibly infringe, a third party's intellectual property rights, each Party shall promptly give notice of such claim or litigation to the other Party.
17.3 Subject to the warranties set forth in Sections 14 and 15 hereof, the "Litigating Party", which shall be:
(a) Faulding with respect to any actions associated with alleged infringement of or by Patents involving the Pellets or Pellet Technology; and
(b) Purepac with respect to any actions associated with alleged infringement of or by Patents involving the Tabletting Technology, the Formulated Product or active drug substances, shall have the right but not the obligation to defend or prosecute any right with respect to such Patent. In such event, the other party shall cooperate with the Litigating Party.
17.4 If the Litigating Party fails to prosecute or defend any such action within one (1) year after giving or receiving notice thereof, then the other party shall have the right, but not the obligation, to prosecute or defend any such action on its own behalf and, if necessary to sustain standing, the right to name the Litigating Party, or, if app...
Patent Prosecution Maintenance and Infringement