Common use of Prosecution & Maintenance Clause in Contracts

Prosecution & Maintenance. COMPANY will bear all expenses relating to the filing, prosecution, and maintenance of all PATENT RIGHTS after the EFFECTIVE DATE. Upon approval of the law firm by LICENSOR, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directly, so long as LICENSOR is copied on all correspondence and notified prior to any substantive actions. Title to all patents and patent applications shall reside in LICENSOR. COMPANY shall (a) cause its patent counsel to timely copy LICNESOR on all official actions and written correspondence with any patent office, and (b) allow LICENSOR and/or its counsel an opportunity and reasonably sufficient time to comment and advise COMPANY with respect thereto. COMPANY shall consider in good faith and reasonably incorporate all comments and advice from LICENSOR. At least thirty (30) days in advance of any filing or response deadline, or fee due date, COMPANY may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within PATENT RIGHTS, provided that COMPANY pays for all costs incurred up to LICENSOR’S receipt of such notification. Failure to provide such notification will be considered by LICENSOR to be COMPANY’s willingness to proceed at COMPANY’s expense. Upon such notification, at LICENSOR’S own expense, LICENSOR may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”), and any rights or license granted hereunder held by COMPANY, AFFILIATED COMPANIES or SUBLICENSEE(S) relating to COMPANY-ABANDONED PATENTS shall terminate.

Prosecution & Maintenance. COMPANY will bear JHU, at Company’s expense (except as provided below), and following reasonable consultation with Company (as provided below), shall file, prosecute and maintain all expenses relating patents and patent applications specified under PATENT RIGHTS and, subject to the filingterms and conditions of this Agreement, prosecution, and maintenance of all PATENT RIGHTS after the EFFECTIVE DATE. Upon approval of the law firm by LICENSOR, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directly, so long as LICENSOR is copied on all correspondence and notified prior to any substantive actionsCompany shall be licensed thereunder. Title to all such patents and patent applications shall reside in LICENSORJHU. COMPANY JHU shall have full and complete control over all patent matters in connection therewith under the PATENT RIGHTS, provided however, that JHU shall (a) cause its patent counsel to timely copy LICNESOR Company on all official actions and written correspondence with any patent office, and (b) allow LICENSOR and/or its counsel Company an opportunity and reasonably sufficient time to comment and advise COMPANY with respect theretoJHU. COMPANY JHU shall consider in good faith and reasonably incorporate all comments and advice from LICENSORprovided by Company. At By concurrent written notification to JHU and its patent counsel at least thirty (30) days in advance (or later at JHU’s discretion) of any filing or response deadline, or fee due date, COMPANY Company may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within PATENT RIGHTSpatent, provided that COMPANY Company pays for all costs incurred up to LICENSOR’S the date of JHU’s receipt of such notification. Failure to provide such notification will can be considered by LICENSOR JHU to be COMPANYCompany’s willingness authorization to proceed with the relevant filing at COMPANYCompany’s expense. Upon such notification, at LICENSOR’S own expense, LICENSOR JHU may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”)at its own expense and for its own benefit, and any rights or license granted hereunder held by COMPANYCompany, AFFILIATED COMPANIES or SUBLICENSEE(S) SUBLICENSEES, relating to COMPANY-ABANDONED PATENTS the PATENT RIGHTS which comprise the subject of such patent applications or patent and/or apply to the particular country, shall terminate.

Prosecution & Maintenance. COMPANY will bear JHU, at Company’s expense, shall file, prosecute and maintain all expenses relating patents and patent applications specified under PATENT RIGHTS and, subject to the filingterms and conditions of this Agreement, prosecution, and maintenance of all PATENT RIGHTS after the EFFECTIVE DATE. Upon approval of the law firm by LICENSOR, COMPANY may oversee future patent prosecution using its patent counsel and pay patent expenses directly, so long as LICENSOR is copied on all correspondence and notified prior to any substantive actionsCompany shall be licensed thereunder. Title to all such patents and patent applications shall reside in LICENSORJHU. COMPANY JHU shall have control over all patent matters in connection therewith under the PATENT RIGHTS, provided however, that (a) JHU shall cause its patent counsel to timely copy LICNESOR on keep Company fully advised of the status of the patent applications and patents that are in the PATENT RIGHTS by providing Company copies of all pertinent information related thereto, including but not limited to copies of all patent searches, patent applications, prosecution papers, issued patents, correspondence related to patent application and patents, litigation papers, official actions and written correspondence with any patent office, US or foreign, within two weeks of receipt, or sooner as appropriate for urgent matters, and (b) allow LICENSOR and/or Company shall have the right to have its own patent counsel prepare any application, amendment, office action response, or any other document related to the preparation, filing, prosecution, or maintenance of any patent or patent application under the PATEN RIGHTS subject to an opportunity by JHU’s patent counsel to review and provide comment on any such application, amendment, office action response, or other document .. JHU shall consider and reasonably sufficient time proceed as recommended by Company. Further, JHU, through their patent counsel, shall be responsible for the filing of such application, amendment, office action response, or other document with the appropriate patent office. By concurrent written notification to comment JHU and advise COMPANY with respect thereto. COMPANY shall consider in good faith and reasonably incorporate all comments and advice from LICENSOR. At its patent counsel at least thirty (30) days in advance (or later at JHU’s discretion) of any filing or response deadline, or fee due date, COMPANY Company may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent within PATENT RIGHTSpatent, provided that COMPANY Company pays for all costs incurred up to LICENSOR’S JHU’s receipt of such notification. Failure to provide such notification will can be considered by LICENSOR JHU to be COMPANYCompany’s willingness authorization to proceed at COMPANYCompany’s expense. Upon such notification, at LICENSOR’S own expense, LICENSOR JHU may file, prosecute, and/or maintain such patent applications or patent within the PATENT RIGHTS with respect to which COMPANY has made the foregoing decision(s) (collectively, the “COMPANY-ABANDONED PATENTS”)at its own expense and for its own benefit, and any rights or license granted hereunder held by COMPANYCompany, AFFILIATED COMPANIES or SUBLICENSEE(S) relating to COMPANY-ABANDONED PATENTS the PATENT RIGHTS which comprise the subject of such patent applications or patent and/or apply to the particular country, shall terminate.