Filing and Prosecution of Patent Applications Sample Clauses

The "Filing and Prosecution of Patent Applications" clause defines the responsibilities and procedures for submitting and managing patent applications related to an agreement. It typically outlines which party is responsible for preparing, filing, and prosecuting patent applications, as well as how decisions regarding patent strategy, jurisdictions, and costs are made. This clause ensures that both parties understand their roles in protecting intellectual property, thereby preventing disputes and promoting efficient management of patent rights.
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Filing and Prosecution of Patent Applications. Filing and prosecution of patent applications on inventions, the coverage of which is requested by Sponsor, shall be carried out by counsel mutually agreeable to both parties.
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Filing and Prosecution of Patent Applications. Filing and prosecution of patent applications and the maintenance of resulting patents on an invention shall be the responsibility of the party owning the invention, provided that where Lilly exercises its right of first refusal with respect to a Development Compound pursuant to Section 6.1(b), [**], of (i) any pertinent ICAgen patent application preparation and prosecution and patent maintenance, and (ii) any pertinent jointly owned patent application preparation and prosecution and patent maintenance, and shall, upon exercising its right of first refusal, promptly pay any and all such reasonable costs and expenses incurred by ICAgen prior to the date of Lilly’s exercise of its first refusal right. In the event of a joint invention, the parties shall jointly control patent application preparation and prosecution and patent maintenance and shall select counsel mutually acceptable to both parties to conduct the filing and prosecution of any patent applications relating to such invention; provided however, for inventions that are chemical compounds, and subject to ICAgen’s approval, which approval will not be unreasonably withheld, Lilly can at its option prepare and file the corresponding patent applications using its in-house counsel [**]. Out-of-pocket expenses incurred in the filing, prosecution and maintenance of applications and resulting patents covering joint inventions [**], provided that costs associated with employees and technical consultants (other than third party technical consultants involved in the preparation of affidavits or declarations and the like for submission in support of prosecution) of a party [**] such costs. In the event that one party decides that it will not pursue or will no longer pursue the prosecution of a jointly owned patent application or maintenance of a jointly owned patent in a given country, and the other party desires to pursue or to continue to pursue such prosecution or maintenance, that party which will not pursue or which will no longer pursue prosecution or maintenance shall assign to the other party its rights in the subject matter of said patent application or patents in such country. For any patent application or resulting patent covering a Development Compound for which one party has assumed responsibility (the “Prosecuting Party”) for the control of the preparation, prosecution and maintenance, the Prosecuting Party shall provide the other party with copies of all documents received from, or to be filed i...
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Filing and Prosecution of Patent Applications. In its sole discretion, the owner of a Development may make all decisions on filing, prosecuting, and maintaining patent applications (both domestic and foreign) that claim or disclose the Development, with three limitations. The owner must (i) obtain the other Party’s approval before using or disclosing the other Party’s Confidential Information (Including JDA-Developed Information) in the filing or prosecuting of the patent application, (ii) provide the other Party with 30 days to review and comment on the patent application prior to its filing, and (iii) cooperate with the other Party to make related patent application filings concurrently (i.e., on the same day). The other Party will not unreasonably withhold its approval when the owner’s use or disclosure of the other Party’s Development is necessary to satisfy the statutory requirements of a patent office and the Parties will cooperate on determining appropriate changes to inventorship and assignment of applications on a case-by·case basis under such circumstances, including during patent prosecution. The other Party’s approval will be deemed granted if the other Party does not object in writing within 60 days of receipt of the owner’s request for approval. If the other Party objects, it will recommend reasonable alternative information for use instead of the objectionable Development. The owner is solely responsible for paying the expenses for the patent applications. Each Party agrees to cooperate with the other Party, as requested, to establish, acquire and maintain intellectual-property protection for the Developments, JDA-Developed Information, and Samples. This includes signing assignments and other appropriate documents, as requested.
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Filing and Prosecution of Patent Applications. GenPharm shall, at --------------------------------------------- its own expense, prosecute and maintain the Japanese patent applications included in the GenPharm Patent Rights. Unless otherwise agreed in writing by the parties, GenPharm shall, in its own name and at its sole expense, file, prosecute and maintain in Japan any patent applications relating to Anti-CD4 ***** REPRESENTS CONFIDENTIAL PORTION WHICH HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SEC. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
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Filing and Prosecution of Patent Applications. The right to file, prosecute, and control all Patents, Base Applications, and other Intellectual Property rights rests solely with the Licensor. Licensor, in its sole discretion, will control the decision to file and the prosecution of all Patents and other Intellectual Property throughout the Territory.
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Related to Filing and Prosecution of Patent Applications

  • Prosecution of Patents (a) The Licensor shall be solely responsible for preparing, prosecuting and maintaining the BENTLEY Patents. (b) Each Party shall cooperate with the other Party to execute all required papers and instruments and to make all required oaths and declarations as may be necessary in the preparation and prosecution of all such patents and other applications and protections referred to in this Section 9.1.

  • Filing of Patent Applications Each Party will make timely decisions regarding the filing of Patent Applications on the CRADA Subject Inventions made solely by its employee(s), and will notify the other Party in advance of filing. Collaborator will have the first opportunity to file a Patent Application on joint CRADA Subject Inventions and will notify PHS of its decision within sixty (60) days of an Invention being reported or at least thirty (30) days before any patent filing deadline, whichever occurs sooner. If Collaborator fails to notify PHS of its decision within that time period or notifies PHS of its decision not to file a Patent Application, then PHS has the right to file a Patent Application on the joint CRADA Subject Invention. Neither Party will be obligated to file a Patent Application. Collaborator will place the following statement in any Patent Application it files on a CRADA Subject Invention: “This invention was created in the performance of a Cooperative Research and Development Agreement with the [INSERT into Agency’s model as appropriate: National Institutes of Health, Food and Drug Administration, Centers for Disease Control and Prevention], an Agency of the Department of Health and Human Services. The Government of the United States has certain rights in this invention.” If either Party files a Patent Application on a joint CRADA Subject Invention, then the filing Party will include a statement within the Patent Application that clearly identifies the Parties and states that the joint CRADA Subject Invention was made under this CRADA.

  • Prosecution and Maintenance of Patent Rights (a) Subject to commercially appropriate and reasonable efforts (subject to oversight by the Advisory Committee), Genetronics shall at its own expense and by counsel of its own choice, file, prosecute and maintain all patent applications and patents within the Genetronics Patent Rights and any inventions conceived of and reduced to practice solely by its employees and agents hereunder. Genetronics shall do everything commercially appropriate and reasonable (subject to oversight by the Advisory Committee), including without limitation filing all documents and paying all fees to the appropriate patent offices to maintain the patents and pending patent applications in effect. Genetronics agrees to promptly provide Ethicon with copies of all correspondence to and from the patent offices related to the pending patent applications within the Genetronics Patent Rights. Ethicon shall have the right to provide comments to Genetronics regarding the content of such correspondence, and to comment thereon. Genetronics shall consider all such comments offered by Ethicon; provided, that all final decisions with respect to such prosecution shall rest solely in the discretion of Genetronics. In the event that Genetronics desires to abandon any such patent application or patent within the Genetronics Patent Rights, or if Genetronics later declines to prosecute or maintain any such patent application or patent, Genetronics shall provide reasonable prior written notice to Ethicon of such intention and Ethicon shall have the right, but not the obligation at its own expense, to file, prosecute, and maintain such patent application or patent, which Genetronics shall assign to Ethicon and shall no longer be subject to the terms of this Agreement. (b) The Advisory Committee shall determine which party shall be responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights on a case by case basis, with the understanding that it is the parties' intent that Genetronics shall be initially responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights related to the Drug Delivery System. In the event that a party responsible for the filing, prosecution and maintenance of any patent application or patent within the Joint Patent Rights desires to abandon such patent application or patent, or if such party later declines responsibility for such patent application or patent, such party shall provide reasonable prior written notice to the other party of its intention to abandon or decline responsibility, and the other party shall have the right, but not the obligation, to prepare, file, prosecute, and maintain any such patent application or patent within the Joint

  • Patent Filing Prosecution and Maintenance 7.1 Except as otherwise provided in this Article 7, the IC agrees to take responsibility for, but to consult with, the Licensee in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall furnish copies of relevant patent-related documents to the Licensee. 7.2 Upon the IC’s written request, the Licensee shall assume the responsibility for the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and shall, on an ongoing basis, promptly furnish copies of all patent-related documents to the IC. In this event, the Licensee shall, subject to the prior approval of the IC, select registered patent attorneys or patent agents to provide these services on behalf of the Licensee and the IC. The IC shall provide appropriate powers of attorney and other documents necessary to undertake this action to the patent attorneys or patent agents providing these services. The Licensee and its attorneys or agents shall consult with the IC in all aspects of the preparation, filing, prosecution and maintenance of patent applications and patents included within the Licensed Patent Rights and shall provide the IC sufficient opportunity to comment on any document that the Licensee intends to file or to cause to be filed with the relevant intellectual property or patent office. 7.3 At any time, the IC may provide the Licensee with written notice that the IC wishes to assume control of the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights. If the IC elects to reassume these responsibilities, the Licensee agrees to cooperate fully with the IC, its attorneys, and agents in the preparation, filing, prosecution, and maintenance of any and all patent applications or patents included in the Licensed Patent Rights and to provide the IC with complete copies of any and all documents or other materials that the IC deems necessary to undertake such responsibilities. The Licensee shall be responsible for all costs associated with transferring patent prosecution responsibilities to an attorney or agent of the IC’s choice. 7.4 Each party shall promptly inform the other as to all matters that come to its attention that may affect the preparation, filing, prosecution, or maintenance of the Licensed Patent Rights and permit each other to provide comments and suggestions with respect to the preparation, filing, prosecution, and maintenance of the Licensed Patent Rights, which comments and suggestions shall be considered by the other party.

  • Prosecution and Maintenance of Patents (a) Arbutus shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus Patents, post-grant review and similar proceedings. Arbutus shall notify Gritstone of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and provide Gritstone with copies of all material filings or responses to be made to the patent authorities with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by Gritstone. Gritstone shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposals. (b) Gritstone shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings. (c) Subject to Section 6.2(d), [***], by counsel it selects to whom [***] has no reasonable objection, in consultation with [***], shall be responsible for the preparation, filing, prosecution and maintenance of the Patents Covering Joint IP in the countries selected by [***] in consultation with [***]. [***] shall provide [***] with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities. (d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and [***] shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof. (e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties. (f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.