Licensed Product Patents Clause Samples

Licensed Product Patents. MDCO shall maintain [***], provided that (i) CyDex shall be provided with the right and opportunity to give comments and recommendations as to the overall strategy regarding the filing, prosecution and maintenance of the Licensed Product Patents, and (ii) MDCO shall seek to prosecute, obtain and maintain the Licensed Product Patents in [***] (the “Major Markets”). MDCO agrees that, during the Term, it will use best efforts to prosecute, obtain and maintain the Licensed Product Patents in the Major Markets. In the event that MDCO decides not to prosecute and maintain the Licensed Product Patents in a country or countries outside of the Major Markets, MDCO shall provide not less than [***] prior written notice of such decision, and CyDex shall have the option to take over the prosecution and maintenance in such country or countries. For clarity, in the event that MDCO fails to meet such requirements for any Major Market country, CyDex shall have the right to terminate this Agreement pursuant to Section 13.2 hereof with respect to such country (but not other countries within the Territory).

Licensed Product Patents. Spectrum shall maintain, at its sole cost and expense and using reasonable discretion, the Licensed Product Patents set forth on Exhibit B. Spectrum shall have the sole right to control the prosecution and maintenance of patent applications and the selection of countries where patent applications are filed related to the Licensed Product Patents; provided, however, (i) CyDex shall be provided with the right and opportunity to give comments and recommendations as to the overall strategy regarding the filing, prosecution and maintenance of the Licensed Product Patents which shall be considered by Spectrum in good faith, and (ii) Spectrum shall use Commercially Reasonable Efforts to prosecute, obtain and maintain the Licensed Product Patents in each of the Major Markets. In the event that Spectrum decides not to prosecute and maintain the Licensed Product Patents in a country, Spectrum shall provide not less than [***] ([***]) days prior written notice of such decision, and CyDex shall have the option to take over the prosecution and maintenance in such country or countries. For clarity, in the event that Spectrum fails to prosecute and/or maintain the Licensed Product Patents in a country, CyDex shall have the right to terminate this Agreement pursuant to Section 13.2 hereof with respect to such country (but not other countries within the Territory) with [***] days notice during which Spectrum may cure this failure.

Licensed Product Patents. Prior to the applicable License Option Effective Date if the Licensed Product affected by Product Infringement is an Option Licensed Product, Xilio shall have the first right, but not the obligation, to prosecute any Product Infringement in the Territory with respect to the applicable Option Product Patents, including as a defense or counterclaim in connection with any Third Party Infringement Claim, at its sole expense, and ▇▇▇▇▇ shall retain control of the prosecution of the applicable claim, suit or proceeding with respect to such Product Infringement; [**]. With respect to each Licensed Product affected by Product Infringement, from and after the Effective Date if the affected Licensed Product is a Collaboration Licensed Product and the applicable License Option Effective Date if the affected Licensed Product is an Option Licensed Product, AbbVie shall have the [**] right, but not the obligation, to prosecute any Product Infringement in the Territory with respect to Licensed Product Patents [**], including as a defense or counterclaim in connection with any Third Party Infringement Claim, at its sole expense and AbbVie shall retain control of the prosecution of the applicable claim, suit or proceeding with respect to such Product Infringement. If AbbVie prosecutes any such Product Infringement, then Xilio shall have the right to join as a party to such claim, suit or proceeding in the Territory and participate with its own counsel at its own expense[**].

Licensed Product Patents. With respect to each Licensed Product, from and after the Effective Date for the Collaboration Licensed Products and the License Option Effective Date for the applicable Option Licensed Products, AbbVie shall [**] the Licensed Product Patents with respect to such applicable Licensed Products in the Territory and to conduct any Defense Proceeding relating thereto (except that in connection with any actions subject to Section 7.3 (Enforcement of Patents), the Party with responsibility for such action pursuant to Section 7.3 (Enforcement of Patents) shall have responsibility for such Defense Proceedings) using counsel of its own choice. AbbVie shall notify ▇▇▇▇▇ of all material developments and all steps to be taken in connection with the prosecution of the Licensed Product Patents (including Defense Proceedings related thereto) and provide ▇▇▇▇▇ with copies of all material filings or responses to be made to the patent authorities with respect thereto and all other material submissions and correspondence with any patent authorities regarding any such Patent, in each case, in sufficient time to allow for review and comment by ▇▇▇▇▇. [**].

Licensed Product Patents. Subject to Section 7.2.3 (Minimum Prosecution and Maintenance Obligations), Vir shall have the first right, but not the obligation, to control the preparation, filing, prosecution, and maintenance, including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates and oppositions (“Prosecution” and “Prosecute” when used as a verb) of all Licensed Product Patents in the Territory, at its sole cost and expense and by counsel of its choosing that is reasonably acceptable to Sanofi. The Parties shall cooperate in good faith to complete the transfer of Prosecution of Licensed Product Patents to Vir or its designated legal counsel within [***] of the Effective Date. Reasonably in advance of each substantive submission to be filed (and no less than [***], Vir will provide Sanofi with a reasonable opportunity to review and comment on the proposed submission to any patent office and to provide input on Prosecution strategy, which Vir will consider in good faith. Vir will keep Sanofi reasonably informed of the status of the applicable Patents by timely providing Sanofi with copies of any papers and all material communications relating to such Patents that are received from any patent office or patent counsel of record or foreign associate. In the event that Vir desires to abandon or cease Prosecution of any Licensed Product Patents in the Territory, Vir shall provide reasonable prior written notice to Sanofi of such intention to abandon at least [***] in advance of the due date of any payment or other action that is required to Prosecute such Licensed Product Patent and Sanofi shall thereafter have the sole right, but not the obligation, to Prosecute such Licensed Product Patent, at its sole cost and expense and by counsel of its own choice. Further, if ▇▇▇ decides to close prosecution of a Licensed Product Patent family in any country or jurisdiction (such as before the European Patent Office) by not filing a subsequent divisional or continuation application before a grant of a Licensed Product Patent in that country or jurisdiction, Vir shall provide reasonable prior written notice to Sanofi of such intention to not file a subsequent divisional or continuation application at least [***] in advance of the deadline and seek ▇▇▇▇▇▇’s written consent, which will not be unreasonably withheld or conditioned, and which consent shall be deemed to have been granted if Sanofi does not respond with...

Licensed Product Patents. Sage shall maintain, [***], provided that CyDex shall be provided with the right and opportunity to give comments and recommendations as to the overall strategy regarding the filing, prosecution and maintenance of the Licensed Product Patents. Sage agrees that, during the Term, it will use Commercially Reasonable Efforts to prosecute, obtain and maintain the Licensed Product Patents in [***]. In the event that Sage decides not to prosecute and maintain the Licensed Product Patents in a country or countries which is not a major market, Sage shall provide not less than [***] prior written notice of such decision, and CyDex shall have the option to take over the prosecution and maintenance in such country or countries.

Licensed Product Patents. Sage shall maintain, at its sole cost and expense and using reasonable discretion, any Licensed Product Patents set forth on Exhibit B to the form of Commercial License Agreement attached hereto as Exhibit A-1. Sage shall have the sole right to control the prosecution and maintenance of patent applications and the selection of countries where patent applications are filed related to such Licensed Product Patents.

Licensed Product Patents. Subject to the remainder of this Section 15.1, including [***] to the Prosecution of Patents pursuant to Section 15.1(d) and its rights under clause (iii) below with respect to the Nektar Technology, AstraZeneca, in consultation with the Patent Working Group, shall have the right, but not the obligation, to prepare, file, prosecute (including the responsibility to conduct and manage any interferences, reissue proceedings, oppositions and re-examinations), and maintain (collectively, “Prosecute” or “Prosecution”) the Licensed Product Patents, other than the Nektar Technology Within LPP Patents (which are the subject of clause (iii) below), throughout the Territory, at AstraZeneca’s expense.

Licensed Product Patents