Common use of Patent Filing Prosecution and Maintenance Clause in Contracts

Patent Filing Prosecution and Maintenance. 6.2.1 Penn Patent Rights will be held in the name of Penn; provided that […***…]. Penn Patent Rights shall be obtained with counsel selected by Penn and reasonably acceptable to Licensee (“Patent Counsel”). Upon […***…] written request, […***…] shall file, prosecute and maintain in accordance with the terms of this Agreement one or more patent applications claiming solely one or more Licensed Products. […***…] shall control all actions and decisions with respect to the filing, prosecution and maintenance of Penn Patent Rights and will […***…] will instruct Patent Counsel to copy […***…] on all correspondence related to Penn Patent Rights (including copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application) and to interact with Licensee with respect to the preparation, filing, prosecution and maintenance of Penn Patent Rights. […***…] has the right to take action to preserve rights and minimize cost whether or not […***…] has commented, and will use reasonable efforts to not allow any Penn Patent Right for which Licensee is licensed and is underwriting the costs to lapse or become abandoned without Licensee’s written authorization under this Agreement, except for filing of continuations, divisionals, or the like that substitute for the lapsed application, provided that, and without limiting Section 6.2.3, […***…] shall have no requirement to file, prosecute, or maintain Penn Patent Rights if Licensee is not current with the Patent Cost obligations as set forth in this Agreement and Licensee does not cure any lapse with respect Patent Cost obligations within […***…] of receiving written notice thereof. For the purposes of this Agreement, “maintenance” of the Penn Patent Rights includes interference proceedings, re-examinations, inter parties patent review proceedings before the USPTO or a similar patent administration outside the US (including opposition proceedings at the EPO). For further clarity, validity challenges raised in infringement litigation will be handled per Section 6.

Patent Filing Prosecution and Maintenance. 6.2.1 6.1.1 Penn Patent Rights will be held in the name of Penn; provided that […***…]. Penn Patent Rights shall be and obtained with counsel selected by Penn and reasonably acceptable to Licensee (“Patent Counsel”). Upon […***…] written request, […***…] shall file, prosecute and maintain in accordance with the terms of this Agreement one or more patent applications claiming solely one or more Licensed Products. […***…] Penn shall control all actions and decisions with respect to the filing, prosecution and maintenance of Penn Patent Rights. Penn will provide Licensee with advance copies of filings of the Penn Patent Rights and will consider in good faith reasonable comments and suggestions by Licensee, and […***…] (collectively, the “Product Specific Patent Rights”), Penn will incorporate any reasonable comments or suggestions by Licensee with respect to same. Penn will instruct Patent Counsel to copy […***…] Licensee on all correspondence related to Penn Patent Rights A (including copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application) and to interact with Licensee with respect to the preparation, filing, prosecution and maintenance of Penn Patent RightsRights ▇. […***…] ▇▇▇▇ has the right to take action to preserve rights and minimize cost whether or not […***…] has commented], and will use reasonable efforts to not allow any Penn Patent Right Rights A for which Licensee is licensed and is underwriting the costs to lapse or become abandoned without Licensee’s written authorization under this Agreement, except for filing of continuations, divisionals, or the like that substitute for the lapsed application[*], provided that, and without limiting Section 6.2.3, […***…] Penn shall have no requirement to file, prosecute, or maintain Penn Patent Rights A if Licensee is not current with the Patent Cost obligations as set forth in this Agreement and Licensee does not cure any lapse with respect Patent Cost obligations within […***…] of receiving written notice thereofAgreement. For the purposes of this Agreement, “maintenance” of the Penn Patent Rights A includes interference proceedings[*], reprovided Penn’s participation in such proceedings is undertaken in good-examinations, inter parties patent review proceedings before the USPTO or a similar patent administration outside the US (including opposition proceedings at the EPO)faith consultation with Licensee. For further clarity, validity challenges raised in infringement litigation [*] will be handled per pursuant to the provisions of Section 66.3. 6.1.2 Licensee has the right to request a country filing via a written request to Penn [*] prior to the deadline set by the patent office in the territory in which filing is to take place (“Prosecution Request”), and Penn shall in connection with Section 6.1.1 provide written notice to Licensee of filing, prosecution and maintenance with respect to the Penn Patent Rights. If Penn files a patent application, prosecutes or maintains any Penn Patent Rights in any country, Licensee shall, in connection with Section 6.2, be responsible for its pro rata share of such filing, prosecution or maintenance of the Penn Patent Right, unless Licensee provides written notice to Penn of its election to abandon such Penn Patent Right. Upon written notice to Penn of Licensee’s election to abandon any such Penn Patent Right in any such country, such Patent Rights for such country will not be part of Penn Patent Rights and therefore not subject to this Agreement, including the License, and Licensee will have no further rights or license to them in such country.

Patent Filing Prosecution and Maintenance. 6.2.1 Penn 5.1.1 Institutions’ Patent Rights will be held in the name of Penn; provided that […***…]. Penn Patent Rights shall be Institutions (as applicable) and obtained with counsel selected by Penn and reasonably acceptable to Licensee (“Patent Counsel”). Upon […***…] written request, […***…] shall file, prosecute and maintain in accordance with the terms of this Agreement one or more patent applications claiming solely one or more Licensed Products. […***…] Penn shall control all actions and decisions with respect to the filing, prosecution and maintenance of Penn Institutions’ Patent Rights and will […***…] consider in good faith any reasonable comments or suggestions by Licensee with respect to same. Penn will instruct Patent Counsel to copy […***…] Licensee on all correspondence related to Penn Institutions’ Patent Rights (including copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application) and to interact with Licensee with respect to the preparation, filing, prosecution and maintenance of Penn Institutions’ Patent Rights. […***…] Penn has the right to take action to preserve rights and minimize cost whether or not […***…] Licensee has commented, and will use reasonable efforts to not allow any Penn Institutions’ Patent Right Rights for which Licensee is licensed and is underwriting the costs to lapse or become abandoned without Licensee’s written authorization under this Agreement, except for filing of continuations, divisionals, or the like that substitute for the lapsed application, provided that, and without limiting Section 6.2.3, […***…] Penn shall have no requirement to file, prosecute, or maintain Penn Institutions’ Patent Rights if Licensee is not current with the Patent Cost obligations as set forth in this Agreement and Licensee does not cure any lapse with respect to Patent Cost obligations within […***…*] of receiving written notice thereof. For the purposes of this Agreement, “maintenance” of the Penn Institutions’ Patent Rights includes interference proceedings, re-examinations, inter parties partes patent review proceedings before the USPTO or a similar patent administration outside the US (including opposition proceedings at the EPO)US. For further clarity, validity challenges raised in infringement litigation will be handled per Section 6.5.4

Patent Filing Prosecution and Maintenance. 6.2.1 5.1.1 Penn Patent Rights and FRA Patent Rights will be held in the name of Penn; provided that […***…]. Penn Patent Rights shall be and obtained with counsel selected by Penn and reasonably acceptable to Licensee (“Patent Counsel”). Upon […***…] written request, […***…] shall file, prosecute and maintain in accordance with the terms of this Agreement one or more patent applications claiming solely one or more Licensed Products. […***…] Penn shall control all actions and decisions with respect to the filing, prosecution and maintenance of Penn Patent Rights Rights, will instruct Patent Counsel to provide a copy of all relevant documents and correspondence related to the Penn Patent Rights, and will […***…] direct Patent Counsel to reasonably consider any reasonable comments, advice or suggestions by Licensee with respect to same. Penn will instruct Patent Counsel to copy […***…] Licensee on all correspondence related to Penn Patent Rights (including including, but not limited to, copies of each patent application, office action, response to office action, request for terminal disclaimer, and request for reissue or reexamination of any patent or patent application) and to interact with Licensee with respect to the preparation, filing, prosecution and maintenance of Penn Patent Rights. […***…] Penn has the right to take action to preserve rights and minimize cost whether or not […***…] Licensee has commented, and will use reasonable efforts to not allow any Penn Patent Right Rights for which Licensee is licensed and is underwriting the costs to lapse or become abandoned without Licensee’s written authorization under this Agreement, except for filing of continuations, divisionals, or the like that substitute for the lapsed application, provided that, and without limiting Section 6.2.3, […***…] Penn shall have no requirement to file, prosecute, or maintain Penn Patent Rights if Licensee is not current with the Patent Cost obligations as set forth in this Agreement and Licensee does not cure any lapse with respect Patent Cost obligations within […***…] of receiving written notice thereofAgreement. For the purposes of this Agreement, “maintenance” of the Penn Patent Rights includes interference proceedings, re-examinations, inter parties partes patent review and post grant review proceedings before the USPTO or a similar patent administration outside the US (including opposition proceedings at the EPO)US. For further clarity, validity challenges raised in infringement litigation will be handled per Section 65.4, Infringement. ​ ​ 5.1.2 Licensee has the right to request a country or jurisdiction filing via a written request to Penn at least [**] prior to the deadline set by the patent office in the territory in which filing is to take place (“Prosecution Request”), provided that the Parties will use good faith efforts to communicate regarding such deadlines in order to ensure that filings are made where Licensee desires them to be made. Provided that Penn or Patent Counsel has notified Licensee of such deadline in writing at least [**] in advance of such deadline, the absence of a given Prosecution Request by such deadline will be considered an election not to secure the Patent Rights associated with the specific phase of patent prosecution in such country or jurisdiction, and such patent application(s) and patent(s) (“Carve-Out Patent Rights”) will cease to be part of the Penn Patent Rights and therefore cease to be subject to this Agreement, including the License, and Licensee will have no further rights or license thereto. 5.1.3 If, and during such time that: (i) Licensee is the only party to which Penn Patent Rights have been licensed by Penn; (ii) there are no unpaid Historic Patent Costs or Ongoing Patent Costs; and (iii) Licensee requests to manage the filing, prosecution and maintenance of Penn Patent Rights, then Penn and Licensee will use reasonable efforts to enter into a mutually agreeable Client and Billing Agreement with Patent Counsel in substantially the form attached hereto as Appendix II, which agreement upon execution shall, determine the management of Penn Patent Rights, in lieu of Section 5.1.1, provided that upon the termination of such agreement, the management of Penn Patent Rights shall be in accordance with Section 5.1.1.