Patents and Patent Costs Clause Samples
The "Patents and Patent Costs" clause defines the responsibilities and rights of the parties regarding the ownership, filing, prosecution, and maintenance of patents arising from their collaboration or agreement. Typically, this clause specifies which party will bear the costs associated with obtaining and maintaining patents, and may outline procedures for deciding who will file patent applications or how patent rights are allocated. Its core function is to ensure clarity and prevent disputes over patent-related expenses and ownership, thereby facilitating smooth management of intellectual property generated under the agreement.
Patents and Patent Costs. 4.1 Licensee agrees that, as between the parties, PTI retains all right, title and interest in and to the Licensed Technology, the Know-how and the Licensed Patents outside the Territory. Licensee agrees never to challenge (a) PTI's ownership of the Licensed Technology, the Know-how and the Licensed Patents and (b) the license to PTI set forth in Paragraph 2.7.
4.2 PTI shall file, prosecute, and maintain Licensed Patents in the Territory, at Licensee's expense. Licensee agrees to pay, or (at PTI's election) promptly to reimburse PTI for, PTI's legal costs incurred under this Paragraph 4.2.
4.3 Failure of Licensee to pay the amounts required under Paragraph 4.2 within thirty (30) days of the receipt of a written statement constitutes a material breach of this Agreement.
4.4 Nothing in this Agreement shall prevent PTI from seeking patents in countries outside the Territory. Such patent applications shall be filed, prosecuted and maintained at PTI's expense, and shall be free of any obligations to Licensee under this Agreement.
Patents and Patent Costs. 4.1 MSU shall retain title to the Technology, Know-how, and the Patents.
4.2 MSU shall file, prosecute, and maintain Patents in the United States and in any other countries designated by Company at Company’s expense.
4.3 Company agrees promptly to reimburse MSU for its outside legal costs incurred under Paragraph 4.2 within thirty (30) days after the receipt of invoices from MSU. Late payment shall be subject to interest charges of one and one-half percent (1½ %) per month. Such reimbursement payments by Company of costs incurred by MSU under Paragraph 4.2 shall be creditable against up to 50% of the royalties that are due from Company to MSU under Article 6 during the same calendar year in which such reimbursements are due.
4.4 Failure of Company to pay the amounts required under Paragraph 4.3 within ninety (90) days after the receipt of invoices from MSU shall constitute a default by Company under this Agreement, and entitle MSU to exercise its rights to terminate this Agreement under Article 13.
4.5 Nothing in this Agreement shall prevent MSU from seeking patents on the Technology in countries other than those designated by Company. Such patent applications shall be filed, prosecuted and maintained at MSU’s expense, and shall be free of any obligations to Company under this Agreement.
Patents and Patent Costs. 4.1 CHRF shall retain title to the Technology, the Know-how and the Patents.
4.2 CHRF shall maintain Patents in the United States and in all foreign countries designated within Paragraph 1.7 herein.
4.3 Company agrees promptly to reimburse CHRF for its outside legal costs incurred under Paragraph 4.2.
4.4 Failure of Company to pay the amounts required under Paragraph 4.1 within thirty (30) days of the receipt of a written statement will be a breach of this Agreement.
Patents and Patent Costs. 4.1 LICENSOR shall retain title to the Technology, Know-how, and the Patents.
4.2 LICENSOR shall file, prosecute, and maintain Patents in the United States and in any other countries designated by LICENSEE at LICENSEE’s expense. LICENSOR and LICENSEE shall jointly control, including selection of outside counsel and consultants, all pending and future preparation, filing, prosecution and maintenance of Patents, for which LICENSEE shall reimburse LICENSOR for any and all future out of pocket expenses (e.g., outside attorney fees, patent office registration and renewal costs etc.) relating to such.
4.3 LICENSEE agrees promptly to reimburse LICENSOR for its outside legal costs incurred under Paragraph 4.2 within thirty (30) days after the receipt of invoices from LICENSOR. Late payment shall be subject to interest charges of one and one-half percent (1½ %) per month. Such reimbursement payments by LICENSEE of costs incurred by LICENSOR under Paragraph 4.2 shall be creditable against up to 50% of the royalties that are due from LICENSEE to LICENSOR under Article 6 during the same calendar year in which such reimbursements are due.
4.4 Failure of LICENSEE to pay the amounts required under Paragraph 4.3 within ninety (90) days after the receipt of invoices from LICENSOR shall constitute a default by LICENSEE under this Agreement, and entitle LICENSOR to exercise its rights to terminate this Agreement, including the provision of notice and the LICENSEE’s right to cure, under Article 13.
4.5 Nothing in this Agreement shall prevent LICENSOR from seeking patents on the Technology in countries other than those designated by LICENSEE; provided, however, that LICENSOR has first notified the LICENSEE of its intention to seek such additional patents and provided the LICENSEE with a reasonable opportunity to join in prosecution of such additional patents pursuant to Section 4.2. In the event the LICENSEE declines to pursue such patent prosecution, it may be filed, prosecuted and maintained at LICENSOR’s sole expense, and shall be free of any obligations to LICENSEE under this Agreement.
Patents and Patent Costs. 4.1 Company shall retain title to the Licensed Technology, the Know-how and the Licensed Patents.
4.2 Company shall file, prosecute, and maintain Licensed Patents in the Territory, or any country(s) designated by Licensee at Licensee’s expense, and Licensee agrees promptly to reimburse Company for its outside legal costs incurred under this Paragraph 4.2.
4.3 Failure of Licensee to pay the amounts required under Paragraph 4.2 within thirty (30) days of the receipt of a written statement constitutes a breach of this Agreement.
4.4 Nothing in this Agreement shall prevent Company from seeking patents in countries other than those designated by Licensee. Such patent applications shall be filed, prosecuted and maintained at Company’s expense, and shall be free of any obligations to Licensee under this Agreement.
Patents and Patent Costs. 7.1 LICR and MPI shall consult and agree on the filing of U.S. and international patent applications covering SRP Joint Materials or SRP Joint Technology. MPI shall have the responsibility of filing, prosecuting and maintaining patent applications and patents included in SRP Joint Patent Rights and shall provide LICR with copies of all Patent Office correspondence in all patent applications included in SRP Joint Patent Rights in sufficient time to provide comments. Each party will provide the other with Patent Office correspondence in respect of LICR Patent Rights, SRP Joint Patent Rights and FRP Joint Patent Rights, as the case may be, in sufficient time to provide comments. The party responsible for handling such patent rights will provide the other with a status report in writing by facsimile on or about March 15 and September 15 of each year starting with 2001. ________________________ ** Certain portions of this exhibit have been omitted based upon a request for confidential treatment that has been filed with the Commission. The omitted portions have been filed separately with the Commission.
7.2 From and after the Effective Date of the FRP Agreement, each party will be responsible for patent costs associated with their respective MPI FRP Rights and LICR FRP Rights. Within thirty (30) days of the Effective Date, the parties will exchange accountings of all patent costs incurred by each party in respect of MPI FRP Rights and LICR FRP Rights which will then be adjusted and paid in accordance with the allocations made under Parts 1.12 and 1.13 hereof.
7.3 MPI will be responsible for all patent costs associated with SRP Joint Patent Rights. Part 8 - Publications ---------------------
8.1 Each party recognizes that the other party may wish to disclose the results of the First and Second Research Programs in the form of presentations at scientific meetings or publications in scientific journals. Each party agrees to submit in writing all such proposed presentations or publications, whether written or oral, to the other party fifteen (15) days prior to submitting same for presentation or publication to enable the parties to take appropriate patent action.
Patents and Patent Costs. 4.1 MSU shall retain title to the Technology, Know-how, and the Patents.
4.2 MSU shall file, prosecute, and maintain Patents in the United States and in any other countries designated by Company at Company’s expense. Company may later approach MSU to add non-designated countries for which MSU has pending applications or patents. Any such later addition shall be at MSU’s discretion.
4.3 Company agrees promptly to reimburse MSU for its outside legal costs incurred under Paragraph 4.2 within thirty (30) days after the receipt of invoices from MSU. Late payment shall be subject to interest charges of one and one-half percent (1½ %) per month. Such reimbursement payments by Company of costs incurred by MSU under Paragraph 4.2 shall be creditable against up to 50% of the royalties that are due from Company to MSU under Article 6 during the same calendar year in which such reimbursements are due.
4.4 Failure of Company to pay the amounts required under Paragraph 4.3 within ninety (90) days after the receipt of invoices from MSU shall constitute a default by Company under this Agreement, and entitle MSU to exercise its rights to terminate this Agreement, including the provision of notice and the Company’s right to cure, under Article 13.
4.5 Nothing in this Agreement shall prevent MSU from seeking patents on the Technology in countries other than those designated by Company. Such patent applications shall be filed, prosecuted and maintained at MSU’s expense, and shall be free of any obligations to Company under this Agreement.
Patents and Patent Costs. LICR at its expense shall be responsible for prosecuting and maintaining patent applications and patents included in LICR Patent Rights set forth in Amended Appendix A. From and after December 20, 1999, MPI will reimburse LICR for the [**] included in LICR Patent Rights. The cost of [**] such patents will be prorated in equal portions among licensees in the event LICR grants any new licenses for therapeutic use under LICR Patent Rights outside the Field.
Patents and Patent Costs. 4.1 DKL shall retain title to the Technology, Know-how, and the Patents.
4.2 DKL shall file, prosecute, and maintain Patents in the United States and in any other countries designated by Company at Company’s expense. Company may later approach DKL to add non-designated countries for which DKL has pending applications or patents. Any such later addition shall be at DKL’s discretion.
4.3 Company agrees promptly to reimburse DKL for its outside legal costs incurred under Paragraph 4.2 within thirty (30) days after the receipt of invoices from DKL. Late payment shall be subject to interest charges of one and one-half percent (1½ %) per month.
4.4 Failure of Company to pay the amounts required under Paragraph 4.3 within ninety (90) days after the receipt of invoices from DKL shall constitute a default by Company under this Agreement, and entitle DKL to exercise its rights to terminate this Agreement, including the provision of notice and the Company’s right to cure, under Article 13.
4.5 Nothing in this Agreement shall prevent DKL from seeking patents on the Technology in countries other than those designated by Company. Such patent applications shall be filed, prosecuted and maintained at DKL’s expense, and shall be free of any obligations to Company under this Agreement.
Patents and Patent Costs. 4.1 Patents will be owned by UC if invented only by UC Inventors; by SHC if invented only by SHC Inventors; and by Cutanogen if invented only by Cutanogen Inventors. Patents will be jointly owned by UC, SHC and/or Cutanogen if jointly invented by UC. SHC and/or Cutanogen Inventors respectively. Inventors is defined under US patent law.
4.2 Cutanogen shall file in the owners' names, prosecute (including interferences. re-issues, oppositions and appeals), procure and maintain Patents in the United States, and in such foreign countries as Cutanogen may choose. at Cutanogen’s sole expense and in Cutanogen’s sole discretion.
4.3 The Licensors shall cooperate with Cutanogen with respect to patent activities, and Cutanogen agrees to promptly reimburse the Licensors for any out-of-pocket expenses they may incur at Cutanogen's request under this Article 4. Payments not received within thirty (30) days after Cutanogen' s receipt of an invoice from the Licensors shall be subject to an interest charge of one percent (1%) per month.