Common use of Prosecution Clause in Contracts

Prosecution. Notwithstanding Article 10 of the Agreement (as amended by Amendment No. 1), LICENSEE shall be entitled, at its sole expense, to assume prosecution of the PATENT APPLICATION and any other United States or foreign patents or patent applications claiming [**], including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s), any reissues, re-examinations, renewals, or extensions, substitutes, and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice of its patent counsel, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparation, prosecution and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expense, and, in the case of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALE.

Appears in 2 contracts

Samples: License Agreement (Kolltan Pharmaceuticals Inc), License Agreement (Kolltan Pharmaceuticals Inc)

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Prosecution. Notwithstanding Article 10 of the Agreement (as amended by Amendment No. 1), LICENSEE shall be entitled, at its sole expense, to assume prosecution of the PATENT APPLICATION and any other United States or foreign patents or patent applications claiming [**], including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s), any reissues, re-examinations, renewals, or extensions, substitutes, and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice of its patent counsel, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparation, prosecution and maintenance of [**] PATENTS in a manner that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE shall have the right to make the final decision concerning such the prosecution. LICENSEE shall have no liability to YALE for damages, whether direct, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions and omissions taken in compliance with the Agreement in connection with such patent prosecution. If LICENSEE desires to abandon any [**] PATENT, LICENSEE will provide YALE with sufficient prior written notice, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, Confidential Materials omitted and filed separately with the Securities and Exchange Commission. Double asterisks denote omissions. then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expense, and, in the case of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALE.

Appears in 1 contract

Samples: License Agreement (Celldex Therapeutics, Inc.)

Prosecution. Notwithstanding Article 10 of As between Celularity, on the Agreement one hand, and TNK and Sorrento, on the other hand, TNK shall have the initial right (as amended by Amendment No. 1but not the obligation), LICENSEE shall be entitledto control the filing, prosecution and maintenance, at its sole expense, to assume prosecution and using patent counsel of the PATENT APPLICATION its choice, any patents and any other United States or foreign patents or patent applications claiming [**]arising out of or relating to this Agreement (including, including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s)without limitation, any reissues, re-examinations, renewals, or extensions, substitutes, patents and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice any TNK IP or Background IP of its patent counselTNK, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALEJoint IP, and (c) any patents or patent applications covering the Licensed Products). TNK shall provide Celularity an opportunity to review and comment on the nature and text of any new or pending patent applications for Patent Rights covering Licensed Products and consider in good faith any comments from Celularity regarding steps that might be taken to strengthen patent protection with respect to any such Patent Rights and shall conduct discussions with Celularity on a reasonable basis regarding the patent prosecution strategy for such preparationPatent Rights. If TNK elects not to file, prosecution prosecute, or maintain any of the Patent Rights in (a)-(c) of this Section 5.3, and maintenance provided that Celularity is not and has not been in breach of [**] PATENTS in a manner this Agreement, and subject to TNK’s reasonable review, oversight, and approval, Celularity may file, prosecute, and maintain, at its expense, and using patent counsel of its choice that is commercially reasonable reasonably acceptable to TNK, (i) patents solely covering Joint IP in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant the Field in the Territory, and (ii) patents covering the Licensed Products in the Field in the Territory (collectively “Celularity Prosecuted Patents”). For clarity, Celularity may not file, prosecute or maintain any patents arising out of this Agreement outside the Territory, containing claims covering inventions outside the Field, or that cover any TNK IP or any Background IP of TNK. Subject to the Agreement. In forgoing, as between Celularity, on the event of a disagreement concerning one hand, and TNK and Sorrento, on the prosecution of the [**] PATENTSother hand, LICENSEE TNK shall have the right to make final decisions pertaining to the prosecution and maintenance of the Celularity Prosecuted Patents, provided, however, that such final decision concerning decisions do not reasonably undermine Celularity’s rights under this Agreement or otherwise unreasonably weaken the Licensed Patents as to Licensed Products and Licensed TNK Material in the Field, and Celularity shall cooperate fully with TNK and provide TNK with such information and execute such documents as TNK reasonably requests to facilitate the prosecutionforegoing. LICENSEE shall have Before filing with a patent office a material document related to the prosecution of the Celularity Prosecuted Patents, Celularity will provide TNK with a copy of the document for TNK’s comments, and will make reasonable efforts to accept and implement comments that TNK provides, provided, however, that Celularity will be under no liability obligation to YALE for damagesmake and implement any changes that, whether directin Celularity’s reasonable opinion upon the advice of counsel, indirect undermine Celularity’s rights under this Agreement or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions otherwise weaken the Licensed Patents as to Licensed Products and omissions taken Licensed TNK Material in compliance the Field. Celularity will provide TNK with the Agreement copies of all material documents that Celularity receives in connection with such patent prosecutionthe prosecution of the Celularity Prosecuted Patents. If LICENSEE desires In the event Celularity decides to abandon any [**] PATENTnon-provisional patent application within the Celularity Prosecuted Patents or declines to file such a patent application (including, LICENSEE will provide YALE with sufficient prior written noticefor example, and YALE may then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution new continuation or divisional of such patent will be at YALE’s expenseapplication) in any jurisdiction (collectively “Celularity Abandoned Patents”), andsubject to the rights of any sublicensee under this Agreement to take over prosecution of any Celularity Abandoned Patents, Celularity will, within a reasonable period of time, notify TNK thereof (and in any event no later than thirty (30) days prior to any non-extendible payment or filing deadline), and Celularity shall then have no right to participate in the case filing, prosecution, or maintenance of this clause (ii)such Celularity Abandoned Patent, LICENSEE will timely assign LICENSEEand Celularity agrees to cooperate fully with TNK and to provide TNK with such information and execute such documents as TNK reasonably requests to facilitate TNK’s joint ownership interests in prosecution and maintenance of such [**] PATENTS that are being abandoned by LICENSEE to YALECelularity Abandoned Patent.

Appears in 1 contract

Samples: License and Transfer Agreement (Sorrento Therapeutics, Inc.)

Prosecution. Notwithstanding Article 10 of As between the Agreement (Parties, except as amended by Amendment No. 1)provided herein, LICENSEE shall be entitled, at its sole expense, to assume prosecution of the PATENT APPLICATION and any other United States or foreign patents or patent applications claiming [**], including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s), any reissues, re-examinations, renewals, or extensions, substitutes, and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retainLicensor shall, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE control and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed solely responsible for the prosecution and maintenance of the progress Licensed Patents. Licensee shall cooperate, at Licensor’s reasonable request, with the prosecution and maintenance of all [**] PATENTS, the Licensed Patents and to give both LICENSEE in any other related proceedings before a patent official or office. Licensor shall consult with and YALE reasonable opportunity to comment keep Licensee reasonably informed on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTSpreparation, LICENSEE shall (a) give due regard to the advice of its patent counsel, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, and (c) conduct such preparationfiling, prosecution and maintenance of [**] PATENTS the Licensed Patents (including notifying Licensee of all material developments with respect to such activities on a worldwide basis in a manner timely manner), furnish Licensee with copies of each document relevant to such preparation, filing, prosecution and maintenance to allow for review and comment by Licensee reasonably (but not less than thirty (30) days) in advance of submission, and shall consider in good faith timely comments from Licensee; provided that is commercially reasonable in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTS, LICENSEE Licensor shall have the right to make the final decision concerning decision-making authority over such the prosecution. LICENSEE shall have no liability to YALE for damagespreparation, whether directfiling, indirect or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions prosecution and omissions taken in compliance with the Agreement in connection with such patent prosecutionmaintenance. If LICENSEE desires Licensee reasonably requests that Licensor take steps to prepare, file, prosecute or maintain any Licensed Patent(s) and Licensor declines or otherwise fails to do so within a reasonable time period, then Licensee shall be entitled to take such reasonable action at its own expense on behalf of Licensor; provided, however, that all such Licensed Patent(s) shall continue to be owned by Licensor. Notwithstanding the foregoing or anything to the contrary herein, if Licensor determines not to prosecute or otherwise abandon any [**] PATENTLicensed Patent(s), LICENSEE will Licensor shall provide YALE Licensee with sufficient prior prompt written notice, and YALE may then assume prosecution notice of such patent; and, thereafter, determination (iwhich notice shall be given at least sixty (60) if days prior to the [**] PATENT remains a “LICENSED PATENT” under the Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases next deadline for any action that may be taken with respect to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expenseLicensed Patent(s)), and, at Licensee’s request, assign to Licensee all right, title and interest in and to such Licensed Patent(s)) without charge. After assignment to Licensee, Licensee and Licensor shall amend and execute an amendment to the case Non-Exclusive License Agreement (executed by both parties as of this clause (iieven date herewith) to include the newly assigned Licensed Patent(s), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALE.

Appears in 1 contract

Samples: Exclusive License Agreement (Minerva Surgical Inc)

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Prosecution. Notwithstanding Article 10 of As between Celularity and Sorrento, on the Agreement other hand, Sorrento shall have the initial right (as amended by Amendment No. 1but not the obligation), LICENSEE shall be entitledto control the filing, prosecution and maintenance, at its sole expense, to assume prosecution and using patent counsel of the PATENT APPLICATION its choice, any patents and any other United States or foreign patents or patent applications claiming [**]arising out of or relating to this Agreement (including, including any continuations, divisionals, and continuations-in-part, and continued prosecution application(s)without limitation, any reissues, re-examinations, renewals, or extensions, substitutes, patents and the relevant international equivalents (collectively, the “[**] PATENT(S)”). Any additional patent applications claiming, using, derived from, or arising from [**] or an [**] PATENT shall be an [**] PATENT. Upon request from LICENSEE, YALE will timely transfer to LICENSEE responsibility for prosecution of the [**] PATENTS. All [**] PATENTS shall be prepared, prosecuted, filed and maintained by independent patent counsel chosen by LICENSEE and reasonably acceptable to YALE. Said independent patent counsel shall be ultimately responsible to LICENSEE, but YALE shall also be the client of said patent counsel. YALE shall have the right to retain, at its own expense, separate patent counsel to advise YALE regarding such patent matters. LICENSEE shall instruct patent counsel to keep LICENSEE, YALE and YALE’s patent counsel, if such counsel should be engaged by YALE, fully informed of the progress of all [**] PATENTS, and to give both LICENSEE and YALE reasonable opportunity to comment on the type and scope of useful claims and the nature of supporting disclosures and other matters in the course of patent prosecution and maintenance. In making its decisions regarding patent matters related to [**] PATENTS, LICENSEE shall (a) give due regard to the advice any Sorrento IP or Background IP of its patent counselSorrento, (b) instruct its patent counsel to consider any advice offered by YALE and YALE’s patent counsel, if such counsel should be engaged by YALEJoint IP, and (c) any patents or patent applications covering the Licensed Products). Sorrento shall provide Celularity an opportunity to review and comment on the nature and text of any new or pending patent applications for Patent Rights covering Licensed Products and consider in good faith any comments from Celularity regarding steps that might be taken to strengthen patent protection with respect to any such Patent Rights and shall conduct discussions with Celularity on a reasonable basis regarding the patent prosecution strategy for such preparationPatent Rights. If Sorrento elects not to file, prosecution prosecute, or maintain any of the Patent Rights in (a)-(c) of this Section 5.3, and maintenance provided that Celularity is not and has not been in breach of [**] PATENTS in a manner this Agreement, and subject to Sorrento’s reasonable review, oversight, and approval, Celularity may file, prosecute, and maintain, at its expense, and using patent counsel of its choice that is commercially reasonable reasonably acceptable to Sorrento, (i) patents solely covering Joint IP in order to commercialize PRODUCTS IN CLASS and/or LICENSED METHODS for which royalties will be payable by LICENSEE to YALE pursuant the Field in the Territory, and (ii) patents covering the Licensed Products in the Field in the Territory (collectively “Celularity Prosecuted Patents”). For clarity, Celularity may not file, prosecute or maintain any patents arising out of this Agreement outside the Territory, containing claims covering inventions outside the Field, or that cover any Sorrento IP or any Background IP of Sorrento. Subject to the Agreement. In the event of a disagreement concerning the prosecution of the [**] PATENTSforgoing, LICENSEE as between Celularity and Sorrento, Sorrento shall have the right to make final decisions pertaining to the prosecution and maintenance of the Celularity Prosecuted Patents, provided, however, that such final decision concerning decisions do not reasonably undermine Celularity’s rights under this Agreement or otherwise unreasonably weaken the Licensed Patents as to Licensed Products and Licensed Material in the Field, and Celularity shall cooperate fully with Sorrento and provide Sorrento with such information and execute such documents as Sorrento reasonably requests to facilitate the prosecutionforegoing. LICENSEE shall have Before filing with a patent office a material document related to the prosecution of the Celularity Prosecuted Patents, Celularity will provide Sorrento with a copy of the document for Sorrento’s comments, and will make reasonable efforts to accept and implement comments that Sorrento provides, provided, however, that Celularity will be under no liability obligation to YALE for damagesmake and implement any changes that, whether directin Celularity’s reasonable opinion upon the advice of counsel, indirect undermine Celularity’s rights under this Agreement or incidental, consequential or otherwise, allegedly arising from its good faith decisions, actions otherwise weaken the Licensed Patents as to Licensed Products and omissions taken Licensed Material in compliance the Field. Celularity will provide Sorrento with the Agreement copies of all material documents that Celularity receives in connection with such patent prosecutionthe prosecution of the Celularity Prosecuted Patents. If LICENSEE desires In the event Celularity decides to abandon any non-provisional patent application within the Celularity Prosecuted Patents or declines to file such a patent application (including, for example, a new continuation or divisional of such patent application) in any jurisdiction (collectively “Celularity Abandoned Patents”), subject to the rights of any sublicensee under this Agreement to take over prosecution of any Celularity Abandoned Patents, Celularity will, within a reasonable period of time, notify Sorrento thereof (and in any event no later than [***] PATENT, LICENSEE will provide YALE with sufficient prior written noticeto any non-extendible payment or filing deadline), and YALE may Celularity shall then assume prosecution of such patent; and, thereafter, (i) if the [**] PATENT remains a “LICENSED PATENT” under the Agreement, then the provisions in the Agreement governing prosecution costs will apply; and (ii) if the [**] PATENT ceases to be a “LICENSED PATENT” under the Agreement, YALE’s prosecution of such patent will be at YALE’s expense, and, in the case of this clause (ii), LICENSEE will timely assign LICENSEE’s joint ownership interests in such [**] PATENTS that are being abandoned by LICENSEE to YALE].

Appears in 1 contract

Samples: License and Transfer Agreement (GX Acquisition Corp.)

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