Prosecution and Maintenance of Licensed Patents. The prosecution and maintenance of the Licensed Patents shall be the primary responsibility of LICENSOR. LICENSOR shall keep BUKWANG informed as to all developments with respect to Licensed Patents and shall keep PHARMASSET informed as to all developments with respect to Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement. BUKWANG shall be afforded reasonable opportunities to advise LICENSOR and cooperate with LICENSOR in such prosecution and maintenance and PHARMASSET, on behalf of BUKWANG, shall be afforded reasonable opportunities to advise LICENSOR and cooperate with LICENSOR in such prosecution and maintenance with respect to Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement. If BUKWANG fails to reimburse LICENSOR for any patent prosecution expenses respecting any patent application or issued patent included in the Licensed Patents within the time allowed therefor, upon at least thirty (30) days’ prior notice to BUKWANG, LICENSOR shall notify PHARMASSET of BUKWANG’s failure to pay such prosecution expenses if any such expenses respect a patent application or an issued patent included in the Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement. If PHARMASSET fails to reimburse LICENSOR for any such patent prosecution expenses within thirty (30) days after receipt of notice, LICENSOR may remove such patent application or issued patent from the Licensed Patents and LICENSOR shall be free, at its election to abandon or maintain the prosecution of such patent application or issued patent or grant rights to such patent application or issued patent to third parties. BUKWANG, upon ninety (90) days advance written notice to LICENSOR, may advise LICENSOR that it no longer wishes to pay expenses for filing, prosecuting or maintaining one or more Licensed Patents. If such Licensed Patents are in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR shall notify PHARMASSET of BUKWANG’s refusal to pay such expenses. If such Licensed Patents are outside of the PHARMASSET licensed territory, or if PHARMASSET does not, within thirty (30) days of such notice, pay the expenses for filing, prosecution or maintaining the Licensed Patents in the territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR may, at its option, elect to pay such expenses or permit such Licensed Patents to become abandoned or lapsed. If LICENSOR elects to pay such expenses, such patents shall not be subject to any license granted to BUKWANG hereunder and LICENSOR shall be free to grant rights to such Licensed Patents to third parties.
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Samples: License Agreement (Pharmasset Inc), License Agreement (Pharmasset Inc)
Prosecution and Maintenance of Licensed Patents. The prosecution and maintenance of the United States and foreign patent applications and patents included in the Licensed Patents shall be the primary responsibility of LICENSORand controlled by STC, with consultation and input by LICENSEE by patent counsel selected by STC that is reasonably acceptable to LICENSEE. LICENSOR STC shall diligently prosecute and maintain the United States and foreign patent applications and patents included in the Licensed Patents. STC, or its patent counsel, shall promptly provide LICENSEE with copies of all relevant documentation to keep BUKWANG LICENSEE informed as to all developments with respect to Licensed Patents the prosecution and shall keep PHARMASSET informed as to all developments with respect to Licensed Patents in that portion maintenance of the patent applications and patents included in the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense AgreementPatents. BUKWANG LICENSEE shall be afforded reasonable opportunities to comment on such documentation and advise LICENSOR STC and cooperate with LICENSOR STC in such prosecution and maintenance and PHARMASSET, on behalf of BUKWANG, shall be afforded reasonable opportunities STC will reasonably consider all such comments and advice made by LICENSEE pursuant to advise LICENSOR and cooperate with LICENSOR in such prosecution and maintenance with respect to Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreementthis Section 7.1. If BUKWANG fails LICENSEE should fail to reimburse LICENSOR STC for any patent prosecution expenses respecting any incurred under this Section in accordance with Section 4.5 of this Agreement, STC shall have no further obligation to prosecute or maintain the patent application or issued patent applications and patents included in the Licensed Patents within the time allowed therefor, upon at least thirty (30) days’ prior notice to BUKWANG, LICENSOR shall notify PHARMASSET of BUKWANG’s failure to pay such prosecution expenses if any such expenses respect a patent application or an issued patent included in the Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense AgreementPatents. If PHARMASSET fails to reimburse LICENSOR for any such patent prosecution expenses within thirty (30) days after receipt of notice, LICENSOR may remove such patent application or issued patent from the Licensed Patents and LICENSOR shall be free, at its election to abandon or maintain the prosecution of such patent application or issued patent or grant rights to such patent application or issued patent to third parties. BUKWANGLICENSEE may, upon ninety (90) days days’ advance written notice to LICENSORSTC, may advise LICENSOR STC that it no longer wishes to pay reimburse STC for expenses for filing, prosecuting or maintaining one or more patent applications or patents included in the Licensed Patents. If such Licensed Patents are in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR shall notify PHARMASSET of BUKWANG’s refusal to pay such expenses. If such Licensed Patents are outside of the PHARMASSET licensed territory, or if PHARMASSET does not, within thirty (30) days The giving of such notice, pay however, shall not relieve LICENSEE of its obligation to reimburse STC for such expenses incurred prior to the expenses for filing, prosecution or maintaining expiration of the Licensed Patents in the territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR ninety (90)-day period. STC may, at its option, elect to pay such expenses or permit such patent applications and patents included in the Licensed Patents to become abandoned or lapsed. If LICENSOR STC elects to pay such expenses, such patents shall not be subject to any license granted to BUKWANG hereunder and LICENSOR shall be free LICENSEE hereunder. Without limiting the foregoing, STC agrees to grant rights to such file any patent application included in the Licensed Patents or prosecute or maintain any Licensed Patent, in each case as requested by LICENSEE, provided that LICENSEE reimburses STC for patent expenses as set forth above. In the event that such costs are anticipated to third partiesbe significant in any particular case, STC may require that LICENSEE advance funds to STC. [*] *Confidential Treatment Requested.
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Prosecution and Maintenance of Licensed Patents. The prosecution filing, prosecution, and maintenance of the Licensed Patents shall be the primary responsibility of LICENSORPRF. LICENSOR PRF shall keep BUKWANG informed promptly inform LICENSEE as to all developments with respect to Licensed Patents and shall keep PHARMASSET informed as to all developments with respect to Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense AgreementPatents. BUKWANG LICENSEE shall be afforded reasonable opportunities to advise LICENSOR PRF and cooperate with LICENSOR PRF in such prosecution and maintenance. At LICENSEE's request, PRF shall file and prosecute additional United States and foreign patent applications on the Technology, with such patent application to be included as Licensed Patents upon their filing. LICENSEE may recommend the attorneys, agents, and/or firms to which PRF delegates tasks relating to the drafting, filing, prosecution, and maintenance of the Licensed Patents, and PHARMASSETPRF shall give due consideration to LICENSEE's recommendation when selecting such attorneys, on behalf of BUKWANGagents, and/or firms. LICENSEE shall be afforded reasonable opportunities entitled to advise LICENSOR and cooperate communicate directly with LICENSOR in such prosecution and maintenance the attorneys, agents, and/or firms selected by PRF concerning the Licensed Patents, provided, however, that PRF shall be the final authority with respect to Licensed Patents in that portion of actions taken by such attorneys, agents, and/or firms with respect to the Licensed Territory licensed Patents. PRF shall provide any written consents and waivers required to PHARMASSET permit the LICENSEE to communicate directly with such attorneys, agents, and/or firms concerning the Licensed Patents. Subsequent to the Effective Date, PRF shall not authorize any activity that will incur expenses for which reimbursement by LICENSEE is required under Article 7.3 of this Agreement unless PRF obtains the Pharmasset Sublicense Agreementprior consent of LICENSEE. If BUKWANG fails LICENSEE should fail to reimburse LICENSOR timely make reimbursement for any patent prosecution expenses respecting any patent application or issued patent included incurred under this paragraph as required in the Licensed Patents within the time allowed thereforArticle 7.3 of this Agreement, upon at least thirty (30) days’ prior notice PRF shall have no further obligation to BUKWANG, LICENSOR shall notify PHARMASSET of BUKWANG’s failure to pay such prosecution expenses if any such expenses respect a patent application or an issued patent included in the Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement. If PHARMASSET fails to reimburse LICENSOR for any such patent prosecution expenses within thirty (30) days after receipt of notice, LICENSOR may remove such patent application or issued patent from the Licensed Patents and LICENSOR shall be free, at its election to abandon prosecute or maintain the prosecution of such patent application or issued patent or grant rights to such patent application or issued patent to third partiesLicensed Patents. BUKWANGLICENSEE, upon ninety (90) days advance written notice to LICENSORPRF, may advise LICENSOR PRF that it no longer wishes to pay expenses for filing, prosecuting or maintaining one or more Licensed PatentsPatent(s). If such Licensed Patents are in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR shall notify PHARMASSET of BUKWANG’s refusal to pay such expenses. If such Licensed Patents are outside of the PHARMASSET licensed territory, or if PHARMASSET does not, within thirty (30) days of such notice, pay the expenses for filing, prosecution or maintaining the Licensed Patents in the territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR PRF may, at its option, elect to pay such expenses or permit such Licensed Patents Patent(s) to become abandoned or lapsed. If LICENSOR PRF elects to pay such expenses, such patents patent(s) shall not be subject to any license granted to BUKWANG hereunder and LICENSOR shall be free to grant rights to such Licensed Patents to third partiesLICENSEE hereunder.
Appears in 1 contract
Samples: License Agreement (Cyberkinetics Neurotechnology Systems, Inc.)
Prosecution and Maintenance of Licensed Patents. The prosecution QLT shall have the right to prosecute and maintenance of maintain the Licensed Patents shall be except that QLT acknowledges that UW controls the primary responsibility prosecution of LICENSORthose Licensed Patents that are licensed by RGX under the UW License. LICENSOR shall keep BUKWANG informed as RGX will provide to QLT copies of all developments notices and information that RGX receives from UW and/or UW’s counsel or patent agents with respect to those Licensed Patents in the Field in the Territory and shall keep PHARMASSET informed as to all developments consult with QLT and follow the reasonable direction of QLT with respect to all decisions or directions with respect to those Licensed Patents in that portion of the Licensed Field in the Territory licensed (to PHARMASSET the extent RGX has the right to, or UW gives RGX the opportunity to, decide or direct such matters under the Pharmasset Sublicense AgreementUW License). BUKWANG RGX shall, at QLT’s option, either convey such direction or decision of QLT to UW, UW’s counsel and/or UW’s patent agent within the time period specified under the UW License or shall be afforded reasonable opportunities authorize QLT to advise LICENSOR correspond directly with UW, UW’s counsel and cooperate with LICENSOR in such prosecution and maintenance and PHARMASSET, on behalf of BUKWANG, shall be afforded reasonable opportunities to advise LICENSOR and cooperate with LICENSOR in such prosecution and maintenance UW’s patent agent(s) with respect to, and to provide direction from time to time and make decisions with regard to, such Licensed Patents in that portion the Field in the Territory. Upon receipt of the Licensed Territory licensed invoices from UW or RGX, QLT shall pay directly to PHARMASSET UW (or if required under the Pharmasset Sublicense Agreement. If BUKWANG fails UW License advance funds) all reasonable costs charged to reimburse LICENSOR RGX by UW for any patent prosecution expenses respecting any patent application or issued patent included in the Licensed Patents within the time allowed therefor, upon at least thirty (30) days’ prior notice to BUKWANG, LICENSOR shall notify PHARMASSET of BUKWANG’s failure to pay such prosecution expenses if any such expenses respect a patent application or an issued patent included in the Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement. If PHARMASSET fails to reimburse LICENSOR for any such patent prosecution expenses within thirty (30) days after receipt of notice, LICENSOR may remove such patent application or issued patent from the Licensed Patents and LICENSOR shall be free, at its election to abandon or maintain the prosecution of such patent application or issued patent or grant rights to such patent application or issued patent to third parties. BUKWANG, upon ninety (90) days advance written notice to LICENSOR, may advise LICENSOR that it no longer wishes to pay expenses for filing, prosecuting or maintaining one or more Licensed Patents. If such Licensed Patents are in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR shall notify PHARMASSET of BUKWANG’s refusal to pay such expenses. If such Licensed Patents are outside of the PHARMASSET licensed territory, or if PHARMASSET does not, within thirty (30) days of such notice, pay the expenses for filing, prosecution or maintaining the Licensed Patents in the territory Field licensed by RGX from UW in accordance with Section 11.6 and Section 11.7 of the UW License. In the event that QLT does not wish to PHARMASSET under pursue the Pharmasset Sublicense Agreementprosecution or maintenance of one or more of the Licensed Patents licensed by RGX from UW or does not wish to pursue such prosecution or maintenance in one or more specific countries in the Territory, LICENSOR mayQLT will give RGX notice of same a reasonable time in advance of any deadline for any payment, at its option, elect filing or action to pay such expenses be taken in connection therewith and RGX may prosecute or permit maintain such Licensed Patents at its sole discretion and sole expense but such applications and resultant Patents will continue to become abandoned be Licensed Patents under this Agreement. Notwithstanding the foregoing, if QLT gives written notice that QLT will not pursue the prosecution or lapsedmaintenance of a RGX Patent (other than a Joint Patent) in any country in a Major Market, QLT will forfeit any rights it has to such RGX Patent (except that QLT will maintain its ownership interest in a Joint Patent) in such country in the Major Market (but not any other country within the Major Market in which such prosecution and maintenance is pursued by QLT) unless QLT agrees to reimburse RGX for all costs incurred by RGX associated with such prosecution and maintenance in such country within the Major Market within 60 days after RGX notifying QLT that RGX has undertaken the prosecution and maintenance of such RGX Patent in such country. If LICENSOR elects to pay In the event such expensesLicensed Patents also contain claims that apply only outside of the Field, such patents QLT shall not be subject responsible for and RGX shall pay the expenses relating to any license granted to BUKWANG hereunder the preparation, prosecution and LICENSOR shall be free to grant rights to maintenance of such Licensed Patents to third parties.Patent claims outside of the Field. 7.5
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Prosecution and Maintenance of Licensed Patents. The prosecution QLT shall have the right to prosecute and maintenance of maintain the Licensed Patents shall be except that QLT acknowledges that UW controls the primary responsibility prosecution of LICENSORthose Licensed Patents that are licensed by RGX under the UW License. LICENSOR shall keep BUKWANG informed as RGX will provide to QLT copies of all developments notices and information that RGX receives from UW and/or UW’s counsel or patent agents with respect to those Licensed Patents in the Field in the Territory and shall keep PHARMASSET informed as to all developments consult with QLT and follow the reasonable direction of QLT with respect to all decisions or directions with respect to those Licensed Patents in that portion of the Licensed Field in the Territory licensed (to PHARMASSET the extent RGX has the right to, or UW gives RGX the opportunity to, decide or direct such matters under the Pharmasset Sublicense AgreementUW License). BUKWANG RGX shall, at QLT’s option, either convey such direction or decision of QLT to UW, UW’s counsel and/or UW’s patent agent within the time period specified under the UW License or shall be afforded reasonable opportunities authorize QLT to advise LICENSOR correspond directly with UW, UW’s counsel and cooperate with LICENSOR in such prosecution and maintenance and PHARMASSET, on behalf of BUKWANG, shall be afforded reasonable opportunities to advise LICENSOR and cooperate with LICENSOR in such prosecution and maintenance UW’s patent agent(s) with respect to, and to provide direction from time to time and make decisions with regard to, such Licensed Patents in that portion the Field in the Territory. Upon receipt of the Licensed Territory licensed invoices from UW or RGX, QLT shall pay directly to PHARMASSET UW (or if required under the Pharmasset Sublicense Agreement. If BUKWANG fails UW License advance funds) all reasonable costs charged to reimburse LICENSOR RGX by UW for any patent prosecution expenses respecting any patent application or issued patent included in the Licensed Patents within the time allowed therefor, upon at least thirty (30) days’ prior notice to BUKWANG, LICENSOR shall notify PHARMASSET of BUKWANG’s failure to pay such prosecution expenses if any such expenses respect a patent application or an issued patent included in the Licensed Patents in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement. If PHARMASSET fails to reimburse LICENSOR for any such patent prosecution expenses within thirty (30) days after receipt of notice, LICENSOR may remove such patent application or issued patent from the Licensed Patents and LICENSOR shall be free, at its election to abandon or maintain the prosecution of such patent application or issued patent or grant rights to such patent application or issued patent to third parties. BUKWANG, upon ninety (90) days advance written notice to LICENSOR, may advise LICENSOR that it no longer wishes to pay expenses for filing, prosecuting or maintaining one or more Licensed Patents. If such Licensed Patents are in that portion of the Licensed Territory licensed to PHARMASSET under the Pharmasset Sublicense Agreement, LICENSOR shall notify PHARMASSET of BUKWANG’s refusal to pay such expenses. If such Licensed Patents are outside of the PHARMASSET licensed territory, or if PHARMASSET does not, within thirty (30) days of such notice, pay the expenses for filing, prosecution or maintaining the Licensed Patents in the territory Field licensed by RGX from UW in accordance with Section 11.6 and Section 11.7 of the UW License. In the event that QLT does not wish to PHARMASSET under pursue the Pharmasset Sublicense Agreementprosecution or maintenance of one or more of the Licensed Patents licensed by RGX from UW or does not wish to pursue such prosecution or maintenance in one or more specific countries in the Territory, LICENSOR mayQLT will give RGX notice of same a reasonable time in advance of any deadline for any payment, at its option, elect filing or action to pay such expenses be taken in connection therewith and RGX may prosecute or permit maintain such Licensed Patents at its sole discretion and sole expense but such applications and resultant Patents will continue to become abandoned be Licensed Patents under this Agreement. Notwithstanding the foregoing, if QLT gives written notice that QLT will not pursue the prosecution or lapsedmaintenance of a RGX Patent (other than a Joint Patent) in any country in a Major Market, QLT will forfeit any rights it has to such RGX Patent (except that QLT will maintain its ownership interest in a Joint Patent) in such country in the Major Market (but not any other country within the Major Market in which such prosecution and maintenance is pursued by QLT) unless QLT agrees to reimburse RGX for all costs incurred by RGX associated with such prosecution and maintenance in such country within the Major Market within 60 days after RGX notifying QLT that RGX has undertaken the prosecution and maintenance of such RGX Patent in such country. If LICENSOR elects to pay In the event such expensesLicensed Patents also contain claims that apply only outside of the Field, such patents QLT shall not be subject responsible for and RGX shall pay the expenses relating to any license granted to BUKWANG hereunder the preparation, prosecution and LICENSOR shall be free to grant rights to maintenance of such Licensed Patents to third partiesPatent claims outside of the Field.
Appears in 1 contract
