Common use of Prosecution & Maintenance Clause in Contracts

Prosecution & Maintenance. JHU shall prepare, file, prosecute, and maintain all patents and patent applications under the PATENT RIGHTS upon authorization of Company and Company shall be exclusively licensed thereunder. Title to all such patents and patent applications shall reside in JHU. JHU shall have full and complete control over all patent matters in connection therewith under the PATENT RIGHTS; provided, however, that JHU shall instruct patent counsel to cross-copy Company with copies of all documents (or drafts thereof) pertaining to the preparation, filing, prosecution, or maintenance of the PATENT RIGHTS so as to enable Company to have a meaningful opportunity to review and comment thereon. JHU will consider and incorporate reasonable comments received from Company. Company shall reimburse JHU, within forty-five (45) days of the receipt of an invoice from JHU, for all reasonable, documented, out-of-pocket costs incurred by JHU after the EFFECTIVE DATE in connection with the preparation, filing, prosecution, and maintenance of the PATENT RIGHTS in the LICENSED FIELD. Company will provide payment authorization to JHU at least one (1) month before an action is due, provided that Company has received timely notice of such action from JHU. Failure to provide authorization can be considered by JHU as a Company decision not to authorize an action. In any country where Company elects not to have a patent application filed or to pay expenses associated with preparing, filing, prosecuting, or maintaining a patent application or patent, JHU may prepare, file, prosecute, and/or maintain the patent application or patent at its own expense and for its own exclusive benefit and Company thereafter shall not be licensed under such patent or patent application in such country.

Prosecution & Maintenance. JHU JHU, at Company’s expense, shall prepare, file, prosecute, prosecute and maintain all patents and patent applications specified under the PATENT RIGHTS upon authorization and, subject to the terms and conditions of Company and this Agreement, Company shall be exclusively licensed thereunder. Title to all such patents and patent applications shall reside in JHU. JHU shall have full and complete control over all patent matters in connection therewith under the PATENT RIGHTS; provided, provided however, that (a) JHU shall instruct cause its patent counsel to cross-copy keep Company with fully advised of the status of the patent applications and patents that are in the PATENT RIGHTS by providing Company copies of all documents 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) Company shall have the right to have its own patent counsel prepare any application, amendment, office action response, or drafts thereof) pertaining any other document related to the preparation, filing, prosecution, or maintenance of any patent or patent application under the PATENT PATEN RIGHTS so as subject to enable Company to have a meaningful an opportunity by JHU’s patent counsel to review and provide comment thereon. on any such application, amendment, office action response, or other document .. JHU will shall consider and incorporate reasonable comments received from reasonably proceed as recommended by Company. Company shall reimburse Further, JHU, within forty-five 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 JHU and its patent counsel at least thirty (4530) days in advance (or later at JHU’s discretion) of the receipt of an invoice from JHUany filing or response deadline, for all reasonableor fee due date, documented, out-of-pocket costs incurred by JHU after the EFFECTIVE DATE in connection with the preparation, filing, prosecution, and maintenance of the PATENT RIGHTS in the LICENSED FIELD. Company will provide payment authorization to JHU at least one (1) month before an action is due, provided that Company has received timely notice of such action from JHU. Failure to provide authorization can be considered by JHU as a Company decision not to authorize an action. In any country where Company elects may elect not to have a patent application filed in any particular country or not to pay expenses associated with preparing, filing, prosecuting, prosecuting or maintaining a any patent application or patent, provided that Company pays for all costs incurred up to JHU’s receipt of such notification. Failure to provide such notification can be considered by JHU to be Company’s authorization to proceed at Company’s expense. Upon such notification, JHU may prepare, file, prosecute, and/or maintain the such patent application applications or patent at its own expense and for its own exclusive benefit benefit, and Company thereafter shall not be licensed under any rights or license granted hereunder held by Company, AFFILIATED COMPANIES or SUBLICENSEE(S) relating to the PATENT RIGHTS which comprise the subject of such patent applications or patent application in such and/or apply to the particular country, shall terminate.