Patent Maintenance and Reimbursement Clause Samples
The Patent Maintenance and Reimbursement clause outlines the responsibilities for maintaining patents and the process for reimbursing related expenses. Typically, this clause specifies which party is obligated to pay for patent maintenance fees, such as government renewal charges, and how the other party may be required to reimburse those costs if they benefit from the patent. Its core function is to ensure that patents remain in force by clarifying financial responsibilities, thereby preventing lapses in protection due to non-payment and avoiding disputes over cost allocation.
Patent Maintenance and Reimbursement. DREXEL retains control over the prosecution and maintenance of Patent Rights. Notwithstanding the foregoing, DREXEL shall obtain LICENSEE’s consent prior to filing any additional patent application(s) in any country not identified on Attachment 1. LICENSEE shall reimburse DREXEL for all reasonable documented attorneys fees, expenses, official fees and other charges incident to the preparation, prosecution and maintenance of Patent Rights within thirty (30) days after LICENSEE’s receipt from time to time of invoices for such fees, expenses and charges. DREXEL shall seek reasonable claims to protect the Patent Rights consistent with DREXEL’s overall patent strategy. DREXEL’s patent counsel shall keep LICENSEE advised as to the status of the Patent Rights by providing LICENSEE, in a timely manner at least thirty (30) days prior to their due date, with copies of all official documents and correspondence relating to the filing, prosecution, maintenance, and validity of the Patent Rights. LICENSEE shall have fifteen (15) calendar days to review and comment on patent-related documents prior to the filing of such documents and correspondence. DREXEL shall not abandon prosecution of any patent application or maintenance of any patent with the Patent Rights without first notifying LICENSEE sixty (60) days prior to any bar date, of DREXEL’s intention and reasons therefore, and providing LICENSEE with reasonable opportunity to assume responsibility for prosecution and maintenance of such patents and patent applications. However, with respect to the issued patents, DREXEL’S patent counsel will send invoices directly to LICENSEE for patent fees and taxes related to maintenance of such patents, with copies to DREXEL, at least 60 days prior to a deadline. LICENSEE shall pay such invoices directly to such patent counsel at least 30 days prior to the deadline, with a copy of correspondence and payment to DREXEL.
Patent Maintenance and Reimbursement. 6.1 Subject to this Article 6, PENN controls the prosecution and maintenance of PENN PATENT RIGHTS. COMPANY must reimburse PENN for all documented attorneys fees, expenses, official fees and other charges incurred after the EFFECTIVE DATE of the option and incident to the preparation, prosecution maintenance and licensing of PENN PATENT RIGHTS. COMPANY's obligation to reimburse such costs shall commence as of the date COMPANY closes an initial [ * ] or greater financing round; reimbursements shall be paid within thirty (30) days after COMPANY’S receipt of invoices for such fees, expenses and charges
6.2 COMPANY shall reimburse PENN for all historically accrued patent and licensing expenses, attorneys fees, official fees and all other charges incident to the preparation, prosecution and maintenance of the PENN PATENT RIGHTS that were incurred before the EFFECTIVE DATE of the Option (March 15, 2002) within thirty (30) days after the date of closing of an initial [ * ] or greater financing round. Such historically accrued expenses are estimated by PENN at approximately [ * ] but will not be greater than [ * ].
6.3 Notwithstanding Section 6.1, COMPANY [ * ]. In that event, PENN shall be the client of the attorney, and COMPANY may directly manage the prosecution of the PENN PATENT RIGHTS through a Client and Billing Agreement attached hereto as Attachment 7 (the "CLIENT AND BILLING AGREEMENT");. COMPANY shall bear all costs of prosecution of the PENN PATENT RIGHTS. PENN shall be copied on all correspondence related to the prosecution of the PENN PATENT RIGHTS between COMPANY and the selected attorney, and retains the right to advise COMPANY regarding patent prosecution. PENN and COMPANY shall in good faith cooperate to implement the prosecution and maintenance of PENN PATENT RIGHTS in accordance with the CLIENT AND BILLING AGREEMENT and COMPANY must promptly pay for all ongoing attorneys fees, expenses, official fees and all other charges incident to the preparation, prosecution and maintenance of the PENN PATENT RIGHTS after the EFFECTIVE DATE of this AGREEMENT in accordance with such CLIENT AND BILLING AGREEMENT. 6.4 COMPANY hereby covenants and agrees that it shall in good faith prosecute PENN PATENT RIGHTS in all countries set forth in Attachment 7 (the “REQUIRED TERRITORIES”); [ * ]; If COMPANY refuses such expenditures under the CLIENT AND BILLING AGREEMENT, or does not reimburse PENN for expenses related to PENN PATENT RIGHTS, COMPANY’S rights in the rel...
Patent Maintenance and Reimbursement. 6.1 PENN shall control, with input from ADEZA, the prosecution and maintenance of PENN PATENT RIGHTS. PENN's Patent Counsel shall be selected and agreed upon to the satisfaction of PENN and ADEZA. ADEZA shall be permitted to communicate directly with PENN's Patent Counsel to maintain and prosecute the PENN PATENT RIGHTS provided that ADEZA, PENN, and PENN's Patent Counsel shall copy one another on all correspondence and documents pertaining to the PENN PATENT RIGHTS within the FIELD and THE SYMBOL [***] IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION. CONFIDENTIAL TREATMENT REQUESTED shall not file any document pertaining to the PENN PATENT RIGHTS within the FIELD with the U.S. or any other country patent office without PENN's prior review and approval.
6.2 ADEZA shall enter into a billing agreement, in form and substance reasonably satisfactory to PENN, ADEZA, and PENN's Patent Counsel with respect to all of the PENN PATENT RIGHTS within the FIELD, pursuant to which ADEZA shall agree to pay directly to such counsel on behalf of PENN such counsel's attorneys' fees, expenses, official fees and other charges in connection with the filing and prosecution of the patent applications and maintenance of PENN PATENT RIGHTS within the FIELD that PENN and ADEZA have mutually agreed to prosecute and maintain. PENN may at PENN's own expense continue to prosecute such claims that ADEZA does not decide to pursue.
6.3 PENN shall retain all right, title and interest in and to the PENN PATENT RIGHTS and other intellectual property protection related thereto except those rights of ADEZA pursuant to this AGREEMENT.
Patent Maintenance and Reimbursement. 6.1 PENN and COMPANY shall jointly control, prosecute and maintain the PENN PATENT RIGHTS during the term of this AGREEMENT pursuant to the terms of a Client and Billing Agreement to be (the “BILLING AGREEMENT”) appended hereto as Attachment 4 and to be entered into promptly after the EFFECTIVE DATE hereof by COMPANY, PENN and the law firm party thereto.
6.2 Unless otherwise indicated in the Client and Billing Agreement, COMPANY shall reimburse PENN for all reasonable documented attorneys fees, expenses, official fees and other charges incident to the preparation, prosecution and maintenance of PENN PATENT RIGHTS incurred by PENN after the EFFECTIVE DATE within thirty (30) days after COMPANY’S receipt of invoices for such fees, expenses and charges.
6.3 Effective on the earlier of the date on which COMPANY has raised equity investment capital of one million dollars ($1,000,000) or June 30, 2002, COMPANY shall promptly reimburse PENN for all documented attorneys fees, expenses, official fees and other charges incident to the preparation, prosecution, and maintenance of PENN PATENT RIGHTS incurred by PENN (either directly or by way of invoice from a third party) prior to the EFFECTIVE DATE and not previously reimbursed to PENN by COMPANY or a third party.
Patent Maintenance and Reimbursement. 10.1 INO shall own all intellectual property rights relating to the VACCINE, including in particular the INO PATENT RIGHTS. VGXI shall have first right of refusal to pay for the maintenance of any new or existing intellectual property rights that INO elects not to pursue in the TERRITORY *** Certain confidential information in this document has been omitted pursuant to a request for Confidential Treatment and filed separately with the Commission. Collaboration and License Agreement Hepatitis B and C 14 10/06/11 INO-VGX INTERNATIONAL
10.2 INO shall provide VGXI at least thirty (30) days notice that a patent under INO PATENT RIGHTS in the TERRITORY is to be abandoned, or a patent application filing opportunity is foregone. The parties agree that VGXI shall have the right of first refusal to pay for any associated fees necessary to prevent such abandonment or cause the filing of the patent application.
Patent Maintenance and Reimbursement. 6.1 Company shall prosecute and maintain the patent applications related to the Patent Rights, using a law firm acceptable to Rockefeller, which acceptance shall not be unreasonably withheld, conditioned or delayed. Rockefeller shall participate in all decisions related to the Patent Rights. Company will be responsible for the payment of all charges and fees invoiced by such law firm. In the event that the terms of Section 3.2.6 apply and a third party has a license with respect to certain fields of Licensed Products, then the total amount of such charges and fees shall be pro-rated between Company and such third party.
6.2 Company shall reimburse Rockefeller for all patent and licensing expenses incurred before the Effective Date of the Agreement within 30 days after the Effective Date of the Agreement, which expenses are set forth on Attachment 3 of this Agreement.
Patent Maintenance and Reimbursement. 10.1 INO shall solely control, prosecute and maintain the INO PATENT RIGHTS during the term of this AGREEMENT at INO’s expense.
10.2 VGXI shall pay INO a PATENT MAINTENTANCE PAYMENT on an annual basis, within ten (10) days from the respective anniversary date of the EFFECTIVE DATE, in accordance with the following schedule: Up to second anniversary $ *** Third to fifth anniversary $ *** Sixth anniversary and beyond $ *** INO agrees to revisit and reduce the amount of the PATENT MAINTENANCE PAYMENT should there be any substantial reduction in the number of registered patent applications under the INO PATENT RIGHTS.
10.3 INO shall provide VGXI at least thirty (30) days notice that a patent under INO PATENT RIGHTS in the TERRITORY is to be abandoned, or a patent application filing opportunity is foregone. The parties agree that VGXI shall have the right of first refusal to pay for any associated fees necessary to prevent such abandonment or cause the filing of the patent application.
Patent Maintenance and Reimbursement. Rockefeller retains control over the prosecution and maintenance of Rockefeller Patent Rights. Licensee shall reimburse Rockefeller for all previously unreimbursed and future documented attorneys fees, expenses, official fees and other charges incident to the preparation, prosecution and maintenance of Rockefeller Patent Rights within thirty (30) days after Licensee's receipt from time to time of invoices for such fees, expenses and charges.
Patent Maintenance and Reimbursement. 6.1 MYRIAD shall [***] prosecute and maintain JOINT PATENT RIGHTS at its sole expense and shall promptly reimburse PENN for all expenses and other charges incident to the preparation of JOINT PATENT RIGHTS. PENN shall provide MYRIAD with itemized statements reflecting these expenses and MYRIAD shall reimburse PENN for such expenses within [***] after receipt of such statement.
6.2 MYRIAD and its sublicensees shall comply with all United States and foreign laws with respect to patent marking of JOINT LICENSED PRODUCTS.
Patent Maintenance and Reimbursement. A. Zavante shall control and pay costs of and diligently prosecute and maintain Inventor or Zavante Patent Rights licensed hereunder. Zavante may by written notice elect to stop paying for the preparation and maintenance of Inventor or Zavante Patent Rights pertaining to any product in any country, in which event, Inventors may assume the obligation of maintaining for their own benefit any such patent or patent application. Zavante shall provide Inventors with such notice at least [**] in advance of any required prosecution or maintenance activity and/or filing related to the Inventor or Zavante Patent Rights, together with such documentation as may reasonably be necessary to diligently and promptly complete such prosecution or maintenance activity and/or filing.