Prosecution Matters Clause Samples

Prosecution Matters. There are no inventorship challenges, opposition or nullity proceedings or interferences declared, commenced or provoked, or to the knowledge of the Seller threatened, with respect to any Patent Rights included in the Seller Registrations. The Seller has complied with its duty of candor and disclosure to the United States Patent and Trademark Office and any relevant foreign patent office with respect to all patent and trademark applications filed by or on behalf of the Seller and has made no material misrepresentation in such applications. The Seller has no knowledge of any information that would preclude the Seller from having clear title to the Seller Registrations or affecting the patentability or enforceability of any Seller Registrations.

Prosecution Matters. There are no inventorship challenges, or opposition, reexamination, nullity or interference proceedings commenced or, to Seller’s Knowledge, threatened in writing, with respect to any Patent Rights included in the Seller Registrations. To Seller’s Knowledge, Seller has complied with all of its obligations and duties to the respective patent offices, including the duty of candor and disclosure to the U.S. Patent and Trademark Office, with respect to all patent and trademark applications filed by or on behalf of Seller.

Prosecution Matters. There are no inventorship challenges, opposition or nullity proceedings or interferences declared, commenced or provoked, or to the knowledge of the Company threatened, with respect to any Patent Rights included in the Company Registrations. The Company has complied with its duty of candor and disclosure to the United States Patent and Trademark Office and any relevant foreign patent office with respect to all patent and trademark applications filed by or on behalf of the Company and has made no material misrepresentation in such applications. The Company has no knowledge of any information that would preclude the Company from having clear title to the Company Registrations or affecting the patentability or enforceability of any Company Registrations.

Prosecution Matters. Seller has no Patent Rights.

Prosecution Matters. (a) Glycomed shall use commercially reasonable efforts to prosecute and maintain the Patent Rights in the Territory. In the event that Glycomed determines it is no longer reasonable to continue the prosecution of one or more of the Patent Rights in the Territory, then Glycomed shall so notify ParinGenix promptly in writing. Upon receipt of any such notice by Glycomed, ParinGenix shall have the right, but not the obligation, to support the continued prosecution or maintenance, of such Patent Rights in the Territory, at ParinGenix’ expense. If ParinGenix elects to continue such support, then ParinGenix shall notify Glycomed in writing within thirty (30) days of receipt of the initial Glycomed notice and Glycomed shall irrevocably, absolutely and unconditionally transfer to ParinGenix all of Glycomed’s right title and interest in and to such Patent Right (in which case such transferred Patent Rights shall no longer be deemed to be “Patent Rights” under this Agreement). The cost of such support shall not be creditable against further royalties on account of Net Sales generated in the Territory. If ParinGenix elects not to continue such support then ParinGenix shall have no further rights or obligations under this Agreement with respect to such Patent Rights in the Territory and the license granted pursuant to Article 3 of this Agreement shall terminate with respect to such Patent Rights in the Territory. (b) Glycomed shall regularly provide ParinGenix with copies of all documents filed hereunder for Patent Rights in the Territory and other material submissions and correspondence with the patent offices, as promptly as received, for review by ParinGenix. In addition, Glycomed shall provide ParinGenix and its patent counsel with an opportunity to consult with Glycomed regarding the filing and contents of any such documents, submission or response, and the timely advice and suggestions of ParinGenix and its patent counsel shall be taken into reasonable consideration by Glycomed and its legal counsel in connection with such filing.

Prosecution Matters. For the avoidance of doubt, all interferences, oppositions, appeals or petitions to any board of appeals in any patent office, appeals to any court for any patent office decisions, reissue proceedings, invalidation proceedings, re-examination proceedings, inter partes reviews, post grant reviews, derivation proceedings or other similar administrative proceedings or administrative appeals thereof, with respect to any Patent Rights under this Agreement shall be considered patent Prosecution matters, and shall be handled in accordance with this Section 7.3. With respect thereto, the non-Prosecuting Party shall (i) join (if required to bring such action) such action voluntarily, and (ii) execute and cause its Affiliates to execute all documents necessary for the Prosecuting Party to initiate such action in the event that the Prosecuting Party is unable to initiate or prosecute such action solely in its own name. In all cases, with respect to the Prosecution of the NewLink Patent Rights or Joint Program Patent Rights, as applicable, the Prosecuting Party shall not enter into any settlement that would oblige the non-Prosecuting Party (or any of its Related Parties) to make any payment or would have a detrimental effect on the Compounds or Products, or the rights or licenses of the non-Prosecuting Party hereunder, without the non-Prosecuting Party’s prior written consent (not to be unreasonably withheld).

Prosecution Matters. There are no inventorship challenges, or opposition, reexamination, nullity or interference proceedings or other written challenges to ownership, use, registrability, patentability, enforceability or validity declared, commenced or provoked or, to the Company’s Knowledge, threatened, with a Governmental Entity, with respect to any Company

Prosecution Matters. As of the Closing Date, there are no inventorship challenges, or opposition, reexamination, nullity or interference proceedings or other challenges to ownership, registrability, patentability, enforceability or validity declared, commenced or, to the Knowledge of the Company, threatened with respect to any Company Registrations. The Company and all Third Parties acting on the Company’s behalf have complied in all material respects with all of their obligations and duties to the respective patent, trademark and copyright offices, including the duty of candor and disclosure to the U.S. Patent and Trademark Office, with respect to all Company Registrations filed by or on behalf of the Company. To the Knowledge of the Company, there is no information that could 39881135.1 ACTIVE/118012393.3 reasonably be expected to result in a challenge to, or otherwise adversely affect the ownership, registrability, patentability, enforceability or validity of any Company Registrations.

Prosecution Matters. There are no inventorship challenges, opposition or nullity proceedings or interferences declared, commenced or provoked, or to the knowledge of the Seller threatened, with respect to any Patent Rights included in the Seller Registrations. The Seller has complied with its duty of candor and disclosure to the United States Patent and Trademark Office and any relevant foreign patent office with respect to all patent and trademark applications filed by or on behalf of the Seller and has made no material misrepresentation in such applications. No circumstance exists that would preclude the Seller from having (or the Buyer from acquiring pursuant to this Agreement) good and valid title to the Seller Registrations, free and clear of all Security Interests, or affecting the patentability or enforceability of any Seller Registrations.