Prosecution by Caltech Clause Samples

Prosecution by Caltech. Caltech shall use reasonable efforts, consistent with its normal practices, to: (a) prosecute any and all patent application(s) in connection with the Exclusively Licensed Patent Rights; and (b) file and prosecute Improvement Patent Rights licensed hereunder for which Caltech or Licensee deems it beneficial to obtain additional coverage. Licensee may recommend patent counsel for this purpose. Caltech shall permit Licensee to review all patent applications and claims made therein, and Caltech shall make reasonable efforts to implement modifications thereto as may be requested by Licensee prior to filing. Caltech shall promptly disclose Improvements to Licensee and Licensee shall elect within thirty (30) days whether such Improvements shall be included within the Improvement Patent Rights, at its expense. Caltech will have no obligation to prosecute patent applications that may constitute Improvements that are not elected by Licensee. Upon written election by Licensee, the parties will amend Exhibit A hereto to include inventions within the Exclusively Licensed Patent Rights, in a timely manner.

Prosecution by Caltech. Caltech shall use reasonable efforts, consistent with its normal practices, to: (a) prepare, file and prosecute any and all patent application(s) in connection with the Exclusively Licensed Patent Rights; and (b) prepare, file and prosecute any and all patent application(s) in connection with the Improvement Patent Rights licensed hereunder for which Caltech or Licensee deems it beneficial to obtain additional coverage. Licensee may recommend patent counsel for this purpose. At Licensee’s request, Caltech shall request that its patent counsel waive any conflict of interest so that such patent counsel may prepare, prosecute and file patent applications for the Licensee in addition to those covered by this Agreement. Such request for conflict waiver can be reasonably withheld by Caltech if in its sole discretion, an actual conflict exists. Caltech shall provide the Licensee with copies of all relevant documents from and correspondence with the U.S. Patent and Trademark Office and corresponding foreign jurisdictions so that Licensee will be informed of the continuing prosecution and other administrative proceedings involving the Exclusively Licensed Patent Rights and the Improvement Patent Rights. Licensee may comment upon such documents and correspondence sufficiently in advance of the filing deadline for a response, and Caltech shall reasonably consider Licensee’s comments in preparing such response. Caltech shall permit Licensee to review all patent applications and claims made therein, and Caltech shall make reasonable efforts to implement modifications thereto as may be requested by Licensee prior to filing and during prosecution. Caltech shall consult with Licensee in a timely manner before electing countries for national stage prosecution. Licensee shall be responsible for costs only for those foreign jurisdictions in which it has elected to proceed with prosecution. With respect to filings pursuant to clause (b) of this Section 4.1, Caltech shall promptly disclose Improvements to Licensee and Licensee shall elect within thirty (30) days whether such Improvements shall be included within the Improvement Patent Rights, at its expense. Caltech will have no obligation to prosecute patent applications that may constitute Improvements that are not elected by licensee. Upon written election by Licensee, Exhibit A shall be automatically amended and deemed to include, without any further action by the Parties, inventions within the Exclusively Licensed Patent ...

Prosecution by Caltech. Caltech will, in accordance with its customary practices: (a) prepare, file, prosecute and maintain any and all patent applications and patents within the Exclusively Licensed Patent Rights; and (b) prepare, file, prosecute and maintain patent applications and patents within the Improvement Patent Rights for which Caltech or Licensee deems it beneficial to obtain additional coverage. Licensee may recommend patent counsel for this purpose. Caltech shall provide to Licensee for review and comment a copy of all documents to be filed in connection with such patent applications and patents (including, but not limited to, draft patent applications and draft responses to Office Actions) at least thirty (30) days prior to any applicable time deadline for filing such documents, and Caltech shall make reasonable efforts to implement modifications thereto as may be requested by Licensee.

Prosecution by Caltech. Caltech shall use reasonable efforts, consistent with its normal practices, to: (a) prosecute any and all patent application(s) included in the Exclusively Licensed Patent Rights; and (b) file and prosecute Improvement Patent Rights licensed hereunder for which Caltech or Licensee deems it beneficial to obtain additional coverage, provided that Licensee is reimbursing patent expenses in accordance with Sections 4.4 and 4.5. Licensee may recommend patent counsel for this purpose. Caltech shall permit Licensee to review and request amendments or modifications on all patent applications and claims made therein, and Caltech shall make reasonable efforts to implement such amendments and modifications thereto as may be requested by Licensee prior to filing.

Prosecution by Caltech. If DPI elects not to file, prosecute or maintain any patent application or patent within the Patent Rights or pay any fee related thereto, in any country DPI shall promptly notify Caltech of such election, but in no case later than sixty (60) days prior to any required action relating to the filing, prosecution or maintenance of such patent application or patent. In such event, and if Caltech elects to take over the filing, prosecution and/or maintenance of one or more patents or applications within the Patent Rights, then in any such case, upon notice to DPI, Caltech shall have the right, at its option, to control the filing, prosecution and/or maintenance of any such patent applications or patents within the Patent Rights at its own expense. In the event that Caltech takes over the filing, prosecution and/or maintenance of a patent or application within the Patent Rights, Caltech shall keep DPI reasonably informed on matters regarding such filing, prosecution and maintenance.

Prosecution by Caltech. If Licensee declines to file, prosecute or maintain any patent application or patent referred to in Section 4.1, then the right to file, prosecute or maintain any such patent application or patent shall revert back to Caltech at its sole cost.