Prosecution. Upon execution of this License Agreement, LICENSEE agrees to pay for all incurred prosecution and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As of the Effective Date, such prior expenses for patent prosecution and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities to advise VANDERBILT and shall cooperate with VANDERBILT as to the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rights, and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity of all Licensed Patent Rights. Without limiting the generality of the foregoing, LICENSEE shall have: (i) the right to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period for review thereof prior to any applicable deadline for filing or responding, and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rights, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license with respect to any Licensed Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunder.
Appears in 1 contract
Prosecution. Spectrum at its expense shall diligently prosecute and maintain the patents and patent applications in the Licensed Intellectual Property (including in the Joint Intellectual Property) using counsel of its choice, which counsel shall also be subject to the reasonable approval of Allergan. Allergan and Spectrum shall consult in good faith with each other prior to any filings or other actions before the U.S. Patent and Trademark Office and other offices with respect to the patents and patent applications in the Licensed Intellectual Property (including the Joint Intellectual Property), including any continuations, and the Parties shall jointly make all decisions pertaining thereto. Allergan may request Spectrum to obtain patent protection for Licensed Intellectual Property (including the Joint Intellectual Property) and, if so requested, Spectrum shall cooperate and diligently file, prosecute and maintain such rights. Upon execution request, Spectrum shall promptly provide Allergan and its counsel with copies of all relevant documentation so that Allergan may be informed and apprised of the continuing prosecution of the patents and patent applications in the Licensed Intellectual Property (including the Joint Intellectual Property). In the event that Spectrum decides not to prosecute, or otherwise to abandon, a patent or application therefor relating to the Licensed Intellectual Property (including the Joint Intellectual Property) in a country in which it is required to do so, Spectrum shall send Allergan written notice of said decision at least ninety (90) days in advance of the action or payment due date. Allergan shall thereupon have the option to take over the patent or **** Certain confidential information contained in this License Agreementdocument, LICENSEE agrees marked with four asterisks, has been omitted and filed separately with the Securities and Exchange Commission pursuant to pay for Rule 24b-2 of the Securities Exchange Act of 1934, as amended. application, and Spectrum shall assign to Allergan all incurred rights in such patent or application in such jurisdiction. In the event that Allergan takes over the prosecution and maintenance of United States the applicable patents and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As of the Effective Date, such prior expenses for patent prosecution and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities to advise VANDERBILT and shall cooperate with VANDERBILT as to the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent RightsIntellectual Property (including the Joint Intellectual Property), and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity of all Licensed Patent Rights. Without limiting the generality Allergan may deduct Spectrum’s share of the foregoingPatent Expenses (defined below) from any amounts due hereunder, LICENSEE shall have: (i) the right to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applicationsprovided, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period for review thereof prior to any applicable deadline for filing or respondinghowever, and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rights, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender its rights under that if Spectrum assigns such patent or application in such jurisdiction to Allergan, then Allergan shall bear the Patent Expenses for such patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish application at its license with respect to any Licensed Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereundersole expense.
Appears in 1 contract
Prosecution. Upon execution Provided that Licensee seeks and maintains the strongest and broadest patent claims reasonably practicable and uses patent attorneys acceptable to BIDMC, such acceptance not to be unreasonably withheld, BIDMC appoints Licensee as its exclusive agent to prepare, file, prosecute (including to seek extensions of), maintain and defend (including inter partes and opposition proceedings) all of the Patent Rights Portions of this License AgreementExhibit, LICENSEE agrees indicated by the xxxx “[***],” were omitted and have been filed separately with the Securities and Exchange Commission pursuant to pay for all incurred prosecution and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As the Registrant’s application requesting confidential treatment pursuant to Rule 24b-2 of the Effective DateSecurities Exchange Act of 1934, such prior expenses for as amended. during the Term. Licensee shall copy BIDMC on all patent prosecution documents and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have give BIDMC reasonable opportunities to advise VANDERBILT Licensee on such filing, prosecution, maintenance and defense. BIDMC shall reasonably cooperate with VANDERBILT as to Licensee in the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant to any such filingprosecution, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rights, and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity defense of all Licensed the Patent Rights. Without limiting Such cooperation includes promptly executing all documents, or requiring inventors, subcontractors, employees and consultants and agents of BIDMC and its Affiliates to execute all documents, and joining as a party in any proceedings, as reasonable and appropriate so as to enable the generality filing, prosecution, maintenance and defense of any Patent Right in any country. In the foregoingevent Licensee desires to abandon the prosecution, LICENSEE shall have: (i) the right to review maintenance or defense of any patent, patent applications application, or any Claims within the Licensed Patent Rights and make recommendations regarding the prosecution where such Claims are not included in a continuation, divisional or other patent or patent application, Licensee shall provide BIDMC with [***] prior written notice of such patent applicationsintended abandonment or decline of responsibility and, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period for review thereof prior Claims, shall reasonably consider BIDMC’s judgment in whether or not to any applicable deadline for filing abandon or respondingnot defend such Claim, and (iii) the right and, as to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rights, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application, such abandonment or election not to defend shall only be with prior notice to BIDMC on a patent by patent and country by country basis. Following If BIDMC desires to prosecute, maintain or defend any such notificationPatent Rights proposed to be abandoned by Licensee under this Agreement, LICENSEE the right to prepare, file, prosecute, maintain and defend the relevant Patent Rights shall revert, as between Licensor and Licensee, to BIDMC, at BIDMC’s expense, subject to any third party rights. In such event, such BIDMC paid-for rights shall be removed from the definition of Patent Rights under this Agreement, the licenses granted to Licensee and its Affiliates as to such Patent Rights shall terminate, and BIDMC shall have no further obligation the right to pay any patent expenses for the patents abandon or patent applications that it surrendered. LICENSEE’s election to relinquish its maintain and license with respect to any Licensed such Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunderdiscretion.
Appears in 1 contract
Prosecution. Upon execution of this License Agreement, LICENSEE agrees to pay for all incurred prosecution and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As of Following the Effective Date, such prior expenses Pfizer shall assume responsibility for patent the preparation, filing, prosecution maintenance and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance cost of all patent applications and patents related to the Inventionincluded in Company Patent Rights, provided however that: (a) VANDERBILT uses using patent counsel agreed upon (outside or internal counsel) and annuity services selected by both parties; Pfizer which are reasonably acceptable to FSMA and (b) LICENSEE the Company. The patent counsel and annuity services selected by Pfizer shall have reasonable opportunities to advise VANDERBILT and shall cooperate with VANDERBILT as to the utilize any appropriate cost-saving measures in handling filing, prosecution prosecution, and maintenance of such the patent applications and patentspatents under the Company Patent Rights. VANDERBILT and LICENSEE shall agree on Pfizer (through its outside or internal patent counsel. VANDERBILT ) shall furnish to LICENSEE copies of documents relevant to promptly provide FSMA and the Company with any such filingand all communications and proposed filings with the United States Patent and Trademark Office, prosecution or maintenance, including without limitation all applications, filings European Patent Office and correspondence related other foreign equivalents relating to the patent applicationsCompany Patent Rights and shall, continuations, continuations-in-part to the extent claims are directed practicable, afford FSMA and the Company the opportunity to subject matter specifically described in comment thereon. Pfizer may file a notice with governmental patent offices of the Licensed exclusive license to the Company Patent Rights granted to Pfizer hereunder. Pfizer shall have the sole right to file and control any application for patent term extension of any patent that may issue out of Company Patent Rights, based on United States Public Law 98-417 (known as the “Xxxxx-Xxxxxx Act”) or any equivalent law or regulation in any country under which patent terms may qualify for extension. Company shall supplement and reissue applications within keep up to date Exhibit A throughout the Licensed Patent Rights Term. Pfizer shall not have any liability to FSMA and respecting the maintenance and validity Company for any act, omission, or default or neglect of all Licensed Patent Rights. Without limiting the generality of the foregoing, LICENSEE shall have: (i) the right outside patent counsel selected pursuant to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period for review thereof prior to any applicable deadline for filing or responding, and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rights, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license this Section 5.1.1 by Pfizer with respect to any Licensed preparing, filing, prosecuting or maintaining Company Patent Rights in any country or countries shall have no effect on its license with respect pursuant to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunder.this Section 5.1.1. CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE SECURITIES EXCHANGE ACT OF 1934. EXECUTION VERSION
Appears in 1 contract
Samples: License Agreement (Repligen Corp)
Prosecution. Upon execution (a) On or before thirty (30) days following the Effective Date, Licensor shall provide Licensee with copies of this License Agreement, LICENSEE agrees to pay complete prosecution files for all Licensed Patents. Licensor hereby delegates to Licensee the exclusive right (but not obligation) to prepare filings for, prosecute (including controlling all interferences, oppositions, reissue proceedings and re-examinations) and maintain all Licensed Patents primarily specific to the Field (each a “Field Specific Licensed Patent”). Licensor and Licensee shall share equally the expenses related to such filings, prosecutions and maintenance. Licensor shall be responsible for the same activities for all other Licensed Patents (each a “Non-Field Specific Patent”) and be solely responsible for all expenses associated therewith. The prosecuting Party shall keep the other Party fully informed as to the status of such patent matters, including by providing the other Party the opportunity to review and comment on any documents relating to the Licensed Patents which shall be filed in any patent office at least fifteen (15) days before such filing and promptly providing such other Party with copies of any documents relating to the Licensed Patents that such controlling Party receives from any patent office. Each Party shall be responsible for all its costs incurred for such preparation, prosecution and maintenance. Upon Licensee’s reasonable request, Licensor shall update Exhibit C. Licensor shall not permit any of the Licensed Patents to be abandoned in any country without Licensee first being given an opportunity to assume full responsibility for the continued prosecution and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILTsame. As of In the Effective Date, such prior expenses for patent event that Licensor decides not to continue the prosecution and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and or maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities to advise VANDERBILT and shall cooperate with VANDERBILT as to the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rightsin any country, and reissue applications within the or to permit an allowed patent application that is a Licensed Patent Rights and respecting the maintenance and validity of all Licensed Patent Rights. Without limiting the generality of the foregoing, LICENSEE shall have: (i) the right to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and related official documentation at such time as to allow issue without there being a reasonable period for review thereof prior to any applicable deadline for filing or responding, and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a pending patent application with at least the same disclosure and specification claiming priority (directly or indirectly) to such allowed patent included within the Licensed Patent Rightsapplication, LICENSEE Licensor shall notify VANDERBILT not less than sixty provide Licensee with notice of this decision at least thirty (6030) days prior to any lapse, abandonment or issuance thereof. In the event that Licensee elects to assume responsibility for such action prosecution and maintenance within thirty (30) days of Licensor’s notice, or deadline required to preserve the file a patent application to maintain pendency, such Licensed Patent (including any later filed Patent Rights and claiming priority (directly or indirectly) thereto) shall thereby surrender its rights under such patent or patent application. Following such notificationthereafter be treated as a “Field Specific Licensed Patent” hereunder, LICENSEE except that Licensee shall have no further obligation to pay any prosecute or maintain Valid Claims that apply outside of the Field (in whole or in part). In addition to the foregoing provisions of this Section 4.1, the Parties agree that, upon Licensee’s reasonable request, on a country-by-country basis, Licensor shall file a patent expenses for the patents or patent applications that it surrendered. LICENSEEapplication at Licensee’s election to relinquish its license with respect expense claiming priority to any Licensed Patent Rights in any country or countries shall have no effect on its license with respect for Licensee to prosecute and maintain such patent application as a Field Specific Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunder.. ******************************************************************** ************************************************************************************* EXCLUSIVE LICENSE AGREEMENT ************************************************************************************* ************************************************************************************* ************************************************************************************* ************************************************************************************* ************************************************************************************* ************************************************************************************* ************************************************************************************* ********
Appears in 1 contract
Samples: Exclusive License Agreement (Innexus Biotechnology Inc)
Prosecution. At its sole cost and expense, NN shall be solely responsible for the prosecution and maintenance, including prosecuting interferences and oppositions, of the Licensed Patents set forth in Exhibit A and the Sublicensed Patents set forth in Exhibits C and D. Upon execution NN’s reasonable request and at no out-of-pocket expense to ZGEN, ZGEN shall render such reasonable assistance, execute any documents and do such other acts as may be reasonably necessary in connection with the prosecution or maintenance of this License Agreementany such Licensed Patents and Sublicensed Patents by NN. To keep ZGEN apprised of its efforts, LICENSEE agrees to pay NN shall provide ZGEN promptly upon receipt with copies of all office actions and significant communications and correspondence from U.S. and foreign patent offices and foreign associates, and copies of NN’s significant responses and amendments for all incurred patent applications included in such Licensed Patents and Sublicensed Patents, including copies of newly filed related patent applications. ZGEN shall have the right to comment on and to discuss prosecution and maintenance activities with NN, and NN shall consider the same in good faith. The Parties will cooperate to ensure transfer of such prosecution and maintenance efforts to NN promptly following the Effective Date. In prosecuting and maintaining the Licensed Patents set forth in Exhibit A and the Sublicensed Patents set forth in Exhibits C and D under this Section 7.1, NN shall employ efforts that are no less than it uses for the prosecution and maintenance of United States its own patents and foreign patents included patent applications. At its sole cost, expense and discretion, ZGEN shall be solely responsible for the prosecution and maintenance, including prosecuting interferences and oppositions, of the Licensed Patents set forth in this Agreement and Exhibit B. ZGEN shall reimburse VANDERBILT for all such expenses provide NN promptly upon receipt with copies of invoices all office actions and significant communications and correspondence from VANDERBILT. As U.S. and foreign patent offices and foreign associates, and copies of XXXX’s significant responses and amendments for all patent applications included in the Effective Date, such prior expenses for patent Licensed Patents set forth in Exhibit B. NN shall have the right to comment on and to discuss prosecution and maintenance total seven thousandactivities with XXXX, nine hundred seventeen dollars ($7,917.00)and XXXX shall consider the same in good faith. VANDERBILT shall have control over The prosecution and maintenance of patent applications and patents related the Sublicensed Patents set forth in Exhibit E shall be subject to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities to advise VANDERBILT and shall cooperate with VANDERBILT as to the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rights, and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity of all Licensed Patent Rights. Without limiting the generality terms of the foregoing, LICENSEE shall have: (i) the right to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period for review thereof prior to any applicable deadline for filing or responding, and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rights, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license with respect to any Licensed Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunderAventis Agreement.
Appears in 1 contract
Samples: Zymogenetics Inc
Prosecution. Upon execution Commencing on the Effective Date and continuing during the License Term, BioMarin Acquisition shall use commercially reasonable efforts and diligence to file, prosecute, issue and maintain all registered intellectual property rights in and to the Taste Masking Related Licensed Patents and Development Licensed Patents in the name of Ascent and on behalf of Ascent, and may, with the prior written consent of Ascent, file and prosecute applications and otherwise pursue registration for any unregistered intellectual property rights in and to the Licensed Technology, Licensed Development Technology and Improvements and such new filings, applications, or the like shall be made in the name of and on behalf of Ascent. For avoidance of doubt, such new filings, applications, or the like shall be considered Taste Masking Related Licensed Patents, Development Licensed Patents or Improvements, as applicable, and shall be subject to the License and the terms and conditions of this License Agreement. In connection with BioMarin Acquisition’s performance of its obligations under this Section 10.1, LICENSEE agrees to pay for all incurred prosecution it shall promptly provide written notification and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As of the Effective Date, such prior expenses for patent prosecution and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities to advise VANDERBILT and shall cooperate with VANDERBILT as to the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant all correspondence from Governmental Bodies or agencies to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rights, and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity Ascent as well as promptly provide drafts of all Licensed Patent Rights. Without limiting the generality of the foregoing, LICENSEE shall have: (i) the right to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period replies for review thereof prior by Ascent. In the event that BioMarin Acquisition elects not to file, prosecute or maintain any applicable deadline for filing or respondingTaste Masking Related Licensed Patents, Development Licensed Patents and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE Improvements, it shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rightsgive reasonable written notice, LICENSEE shall notify VANDERBILT not less than sixty thirty (6030) days prior after such election, to allow Ascent to file, prosecute or maintain such Taste Masking Related Licensed Patents, Development Licensed Patents and Improvements unless BioMarin Acquisition has provided to Ascent a commercially reasonable position for not taking such action. With regard to any Taste Masking Related Licensed Patents, Development Licensed Patents or Improvements that are subject to such action or deadline required written notice, upon the date of the notice, the exclusive license thereto shall be terminated and all Materials related thereto must be immediately returned to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license with respect to any Licensed Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunderAscent within ten (10) Business Days.
Appears in 1 contract
Prosecution. Upon execution Commencing on the Effective Date and continuing during the License Term, BioMarin Acquisition shall use commercially reasonable efforts and diligence to file, prosecute, issue and maintain all registered intellectual property rights in and to the Taste Masking Related Licensed Patents and Development Licensed Patents in the name of Ascent and on behalf of Ascent, and may, with the prior written consent of Ascent, file and prosecute applications and otherwise pursue registration for any unregistered intellectual property rights in and to the Licensed Technology, Licensed Development Technology and Improvements and such new filings, applications, or the like shall be made in the name of and on behalf of Ascent. For avoidance of doubt, such new filings, applications, or the like shall be considered Taste Masking Related Licensed Patents, Development Licensed Patents or Improvements, as applicable, and shall be subject to the License and the terms and conditions of this License Agreement. In connection with BioMarin Acquisition's performance of its obligations under this Section 10.1, LICENSEE agrees to pay for all incurred prosecution it shall promptly provide written notification and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As of the Effective Date, such prior expenses for patent prosecution and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities to advise VANDERBILT and shall cooperate with VANDERBILT as to the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant all correspondence from Governmental Bodies or agencies to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rights, and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity Ascent as well as promptly provide drafts of all Licensed Patent Rights. Without limiting the generality of the foregoing, LICENSEE shall have: (i) the right to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period replies for review thereof prior by Ascent. In the event that BioMarin Acquisition elects not to file, prosecute or maintain any applicable deadline for filing or respondingTaste Masking Related Licensed Patents, Development Licensed Patents and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE Improvements, it shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rightsgive reasonable written notice, LICENSEE shall notify VANDERBILT not less than sixty thirty (6030) days prior after such election, to allow Ascent to file, prosecute or maintain such Taste Masking Related Licensed Patents, Development Licensed Patents and Improvements unless BioMarin Acquisition has provided to Ascent a commercially reasonable position for not taking such action. With regard to any Taste Masking Related Licensed Patents, Development Licensed Patents or Improvements that are subject to such action or deadline required written notice, upon the date of the notice, the exclusive license thereto shall be terminated and all Materials related thereto must be immediately returned to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license with respect to any Licensed Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunderAscent within ten (10) Business Days.
Appears in 1 contract
Prosecution. Upon execution APIL shall have the right to Prosecute any issued patent or pending patent application within the Nanotechnology Patents, the OCR Patents, and the Abuse Resistant Patents at its sole discretion and cost and expense. APIL shall keep Purchaser reasonably informed of this License Agreement, LICENSEE agrees to pay for all incurred activities during the course of such prosecution and maintenance provide Purchaser with copies of United States material correspondence and foreign patents included in this Agreement filings relating to such activities. At APIL’s request and expense, Purchaser will cooperate to Prosecute the Nanotechnology Patents, the OCR Patents and the Abuse Resistant Patents. Without prejudice to the generality of the foregoing sentence, Purchaser shall keep APIL reasonably informed from time-to-time of activities relating to Zogenix Products that are encompassed by the Abuse Resistant Patents and shall reimburse VANDERBILT for all reasonably allow APIL to use data and information generated by Purchaser relating to such expenses promptly upon receipt of invoices from VANDERBILTZogenix Products to Prosecute the Abuse Resistant Patents. As of If in addition to APIL’s activities to Prosecute the Effective DateAbuse Resistant Patents and the Nanotechnology Patents, such prior expenses for patent prosecution and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities to advise VANDERBILT and shall cooperate Purchaser wishes with VANDERBILT as to the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant respect to any such filingAbuse Resistant Patent or any Nanotechnology Patent listed in subsection A-2.6 of Exhibit A-1 to have a divisional, prosecution continuation or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuationscontinuation-in-part application filed that solely claims a compound, composition, method of making or method of using compounds or compositions within the scope of Purchaser’s exclusive license hereunder, then Purchaser shall notify APIL and, subject to the extent claims are directed APIL’s approval, which shall not unreasonably withheld, delayed or conditioned, APIL will use commercially reasonable efforts to subject matter specifically described in the Licensed Patent RightsProsecute such patent application, at Purchaser’s cost EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST. REDACTED MATERIAL IS MARKED WITH [* * *] AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. and expense. Promptly upon receipt, APIL will provide Purchaser with all patent office documents relating to such prosecution, and reissue applications within the Licensed Patent Rights will also provide drafts of responses to office actions and respecting the maintenance and validity of all Licensed Patent Rights. Without limiting the generality of the foregoing, LICENSEE shall have: (i) the right to review other substantive filings with any patent applications within the Licensed Patent Rights and make recommendations office regarding the prosecution of such patent applications, (ii) the right application sufficiently in advance of their submission to receive such patent applications enable review and related official documentation at such time as to allow a reasonable period for review thereof prior to any applicable deadline for filing or responding, and (iii) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventionscomment by Purchaser. LICENSEE shall be obligated to make APIL will consider in good faith all comments timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rights, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license with respect to any Licensed Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereundermade by Purchaser.
Appears in 1 contract
Samples: Transfer and License Agreement (Recro Pharma, Inc.)
Prosecution. Upon execution of this License Agreement, LICENSEE Licensee agrees to pay for all incurred the prosecution and maintenance of all United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILTwithin the Licensed Patent Rights. As of Beginning on the Effective Date, such prior expenses for patent prosecution and maintenance total seven thousandLicensee shall, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have reasonable opportunities extent BioStratum is able to advise VANDERBILT and shall cooperate with VANDERBILT as grant Licensee such control pursuant to the filingterms of the KUMCRI Agreement and USC Agreement, control the continued prosecution and maintenance of such patents and patent applications and patentsapplications. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT BioStratum shall furnish to LICENSEE Licensee copies of all documents relevant to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related . Prior to the patent applicationsassignment of the Assigned Assets, continuations, continuations-in-part to Licensee will regularly advise BioStratum of the extent claims are directed to subject matter specifically described status of all pending applications included in the Licensed Patent Rights, and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity including any related hearings or other proceedings, and, at BioStratum’s request, provide BioStratum with copies of all Licensed Patent Rightsdocumentation concerning such applications, including all correspondence to and from any governmental authority. Without limiting Prior to the generality assignment of the foregoingAssigned Assets, LICENSEE shall have: (i) the right to Licensee will solicit BioStratum’s advice and review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and important prosecution matters related official documentation at such thereto in reasonably sufficient time as to allow a reasonable period for review thereof prior to filing thereof, will take into account BioStratum’s reasonable comments related thereto, and, in any applicable deadline for filing event, will not negligently exercise (or responding, and (iiifail to exercise) the right to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining control in a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within manner which would have a material adverse effect on the Licensed Patent Rights. If LICENSEE In the event Licensee elects not to no longer pay the expenses of a prosecute and/or maintain any patent application applications or patent patents that may be included within the Licensed Patent Rights, LICENSEE Licensee shall so notify VANDERBILT not less BioStratum in writing of such election no later than sixty thirty (6030) days prior to any applicable statutory bar date or response date, as the case may be, to permit BioStratum (at its own expense) to file, prosecute and/or maintain the patent application(s) and/or patent(s) that were the subject of such action or deadline required to preserve notice. Following such notice, such Licensed Patent Rights shall no longer be included in the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent applicationfor purposes of this Agreement. Following such notificationNotwithstanding the foregoing, LICENSEE BioStratum shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license rights with respect to any the prosecution and maintenance of the Licensed Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunderafter the assignment of the Assigned Assets.
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Prosecution. Upon execution of this License AgreementProvided that Licensee seeks and maintains the strongest and broadest patent claims reasonably practicable and uses patent attorneys acceptable to BIDMC, LICENSEE agrees such acceptance not to pay for be unreasonably withheld, BIDMC appoints Licensee as its exclusive agent to prepare, file, prosecute (including to seek extensions of), maintain and defend (including inter partes and opposition proceedings) all incurred prosecution and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As of the Effective DatePatent Rights [***] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, such prior expenses for MARKED BY BRACKETS, HAS BEEN OMITTED BECAUSE THE INFORMATION (I) IS NOT MATERIAL AND (II) WOULD BE COMPETITIVELY HARMFUL IF PUBLICLY DISCLOSED. during the Term. Licensee shall copy BIDMC on all patent prosecution documents and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT shall have control over prosecution and maintenance of patent applications and patents related to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; and (b) LICENSEE shall have give BIDMC reasonable opportunities to advise VANDERBILT Licensee on such filing, prosecution, maintenance and defense. BIDMC shall reasonably cooperate with VANDERBILT as to Licensee in the filing, prosecution and maintenance of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant to any such filingprosecution, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rights, and reissue applications within the Licensed Patent Rights and respecting the maintenance and validity defense of all Licensed the Patent Rights. Without limiting Such cooperation includes promptly executing all documents, or requiring inventors, subcontractors, employees and consultants and agents of BIDMC and its Affiliates to execute all documents, and joining as a party in any proceedings, as reasonable and appropriate so as to enable the generality filing, prosecution, maintenance and defense of any Patent Right in any country. In the foregoingevent Licensee desires to abandon the prosecution, LICENSEE shall have: (i) the right to review maintenance or defense of any patent, patent applications application, or any Claims within the Licensed Patent Rights and make recommendations regarding the prosecution where such Claims are not included in a continuation, divisional or other patent or patent application, Licensee shall provide BIDMC with [***] prior written notice of such patent applicationsintended abandonment or decline of responsibility and, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period for review thereof prior Claims, shall reasonably consider BIDMC’s judgment in whether or not to any applicable deadline for filing abandon or respondingnot defend such Claim, and (iii) the right and, as to request amendments of any such patent applications to include claims or arguments as may be appropriate for obtaining a patent claiming commercially relevant inventions. LICENSEE shall be obligated to make timely payment of all maintenance fees following the issuance of the patent(s) within the Licensed Patent Rights. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent Rights, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender its rights under such patent or patent application, such abandonment or election not to defend shall only be with prior notice to BIDMC on a patent by patent and country by country basis. Following If BIDMC desires to prosecute, maintain or defend any such notificationPatent Rights proposed to be abandoned by Licensee under this Agreement, LICENSEE the right to prepare, file, prosecute, maintain and defend the relevant Patent Rights shall revert, as between Licensor and Licensee, to BIDMC, at BIDMC’s expense, subject to any third party rights. In such event, such BIDMC paid-for rights shall be removed from the definition of Patent Rights under this Agreement, the licenses granted to Licensee and its Affiliates as to such Patent Rights shall terminate, and BIDMC shall have no further obligation the right to pay any patent expenses for the patents abandon or patent applications that it surrendered. LICENSEE’s election to relinquish its maintain and license with respect to any Licensed such Patent Rights in any country or countries shall have no effect on its license with respect to such Licensed Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunderdiscretion.
Appears in 1 contract
Samples: Exclusive License Agreement (X4 Pharmaceuticals, Inc)
Prosecution. Upon execution of this License Agreement, LICENSEE agrees to pay for all incurred prosecution and maintenance of United States and foreign patents included in this Agreement and shall reimburse VANDERBILT for all such expenses promptly upon receipt of invoices from VANDERBILT. As of the Effective Date, such prior expenses for patent prosecution and maintenance total seven thousand, nine hundred seventeen dollars ($7,917.00). VANDERBILT Avidia shall have control over prosecution and maintenance of patent applications and patents related the right, but not the obligation, to the Invention, provided however that: (a) VANDERBILT uses patent counsel agreed upon by both parties; file, prosecute and maintain the Assigned Patent Rights and any Patent Rights claiming the composition, or method of use or manufacture, of any Veterinary Product (“Vet Product Patents”) and (b) LICENSEE shall have reasonable opportunities conduct any interference, reexamination, reissue or opposition proceeding the subject of which is any Assigned Patent Rights and/or any Vet Product Patent ((a) and (b), collectively, to advise VANDERBILT and shall cooperate with VANDERBILT as to “Prosecute” or the filing, prosecution and maintenance “Prosecution” of such patent applications and patents. VANDERBILT and LICENSEE shall agree on patent counsel. VANDERBILT shall furnish to LICENSEE copies of documents relevant to any such filing, prosecution or maintenance, including without limitation all applications, filings and correspondence related to the patent applications, continuations, continuations-in-part to the extent claims are directed to subject matter specifically described in the Licensed Patent Rights, and reissue applications within the Licensed Assigned Patent Rights and respecting any Vet Product Patents), in each case using counsel reasonably acceptable to Maxygen. Avidia shall control the maintenance Prosecution and validity of all Licensed Patent Rights. Without limiting bear the generality of the foregoing, LICENSEE shall have: (i) the right to review patent applications within the Licensed Patent Rights and make recommendations regarding the prosecution of such patent applications, (ii) the right to receive such patent applications and related official documentation at such time as to allow a reasonable period for review thereof prior to any applicable deadline for filing or responding, and (iii) the right to request amendments costs of any such activities undertaken by Avidia or any agent of Avidia. Avidia shall keep Maxygen fully informed of the status of each patent applications application and patent within the Assigned Patent Rights and/or the Vet Product Patents that Avidia Prosecutes, and to include claims or arguments as may be appropriate for obtaining that end, Avidia shall, at a minimum, furnish Maxygen with a copy of each draft submission to a patent claiming commercially relevant inventions. LICENSEE shall be obligated authority of any jurisdiction at least thirty (30) days before the date Avidia proposes to make timely payment of all maintenance fees following such submission in the issuance of the patent(s) within the Licensed Patent Rightscondition that such draft exists at such time. If LICENSEE elects to no longer pay the expenses of a patent application or patent included within the Licensed Patent RightsAvidia shall reasonably and in good faith consider Maxygen’s comments on each such draft submission, LICENSEE shall notify VANDERBILT not less than sixty (60) days prior to such action or deadline required to preserve the Licensed Patent Rights and shall thereby surrender make all reasonable proposed revisions suggested by Maxygen that may effect the rights of Maxygen or its Licensees in the Maxygen Field without adversely affecting Avidia’s rights under such patent or patent application. Following such notification, LICENSEE shall have no further obligation to pay any patent expenses for the patents or patent applications that it surrendered. LICENSEE’s election to relinquish its license with respect to any Licensed the Assigned Patent Rights in and/or Vet Product Patents. Maxygen shall reimburse Avidia for any country or countries reasonable out-of-pocket expenses incurred by Avidia as a result of such revisions requested by Maxygen, if such revisions relate solely to the Maxygen Field. Avidia shall have no effect on its license make reasonable efforts to provide Maxygen with respect an update to such Licensed draft prior to filing to enable Maxygen to monitor progress and further comment on the draft. Avidia shall provide Maxygen with a copy of each submission to a patent authority of a jurisdiction within the Territory reasonably promptly after making such filing and copies of any documents received from any patent office with regard to any of the Assigned Patent Rights in any other country or countries or any other Licensed Patent Rights licensed hereunderand/or Vet Product Patents reasonably promptly following receipt thereof.
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