Patent Prosecution and Maintenance Sample Clauses
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Patent Prosecution and Maintenance. 14.1 REGENTS will diligently prosecute and maintain the United States and foreign patent applications and patents under REGENTS' PATENT RIGHTS, subject to LICENSEE’S reimbursement REGENTS’ out of pocket costs under Paragraph 14.3 below, and all patent applications and patents under REGENTS’ PATENT RIGHTS will be held in the name of REGENTS. REGENTS will have sole responsibility for retaining and instructing patent counsel, but continued use of such counsel at any point in the patent prosecution process subsequent to initial filing of a U.S. patent application covering the INVENTION shall be subject to the approval of LICENSEE. If LICENSEE rejects three of REGENTS’ choice of prosecution counsel, then REGENTS may select new prosecution counsel without LICENSEE’s consent. REGENTS shall promptly provide LICENSEE with copies of all relevant documentation so that LICENSEE may be currently informed and apprised of the continuing prosecution and LICENSEE agrees to keep this documentation confidential in accordance with Article 26. LICENSEE may comment upon such documentation, provided, however, that if LICENSEE has not commented upon such documentation in reasonable time for REGENTS to sufficiently consider LICENSEE’s comments prior to the deadline for filing a response with the relevant government patent office, REGENTS will be free to respond appropriately without consideration of LICENSEE's comments. LICENSEE and LICENSEE's patent counsel will have the right to consult with patent counsel chosen by REGENTS.
14.2 REGENTS will use reasonable efforts to prepare or amend any patent application to include claims reasonably requested by LICENSEE to protect the LICENSED PRODUCTS contemplated to be SOLD or to be practiced under this AGREEMENT.
14.3 Subject to Paragraphs 14.4 all past, present, and future costs for preparing, filing, prosecuting, and maintaining all United States and foreign patent applications, and patents under REGENTS’ PATENT RIGHTS will be borne by LICENSEE, so long as the licenses granted to LICENSEE herein are exclusive. Payments are due within thirty (30) days after receipt of invoice from REGENTS. If, however, REGENTS reduces the exclusive licenses granted herein to non-exclusive licenses pursuant to Paragraphs 7.3, 7.4, or 7.5 and REGENTS grants additional license(s), the costs of preparing, filing, prosecuting and maintaining such patent applications and patents will be divided equally among the licensed parties from the effective date of each...
Patent Prosecution and Maintenance. 8.1 Patent filings and prosecution shall be by counsel of University’s choosing and shall be in the name of University. University shall keep Licensee advised as to the prosecution of such applications by promptly forwarding to Licensee copies of all official correspondence, (including, but not limited to, applications, Office Actions, responses, etc.) relating thereto. Licensee shall have the right, and University shall provide Licensee a reasonable opportunity, to comment and advise University as to the conduct of such prosecution and maintenance, provided, however, that University shall have the right to make the final decisions for all matters associated with such prosecution and maintenance.
8.2 Regarding prosecution and maintenance of foreign patent applications corresponding to the patent applications described in Section 8.1 above, Licensee shall designate in writing that country or those countries, if any, in which Licensee desires such corresponding patent application(s) to be filed. All such applications shall be in University’s name and University shall have the right to make the final decisions for all matters associated with such filings unless payment for the estimated cost of filing is made in advance.
8.3 By written notification to University at least thirty (30) days in advance of any filing or response deadline, or fee due date, Licensee may elect not to have a patent application filed in any particular country or not to pay expenses associated with prosecuting or maintaining any patent application or patent, provided that Licensee pays for all costs incurred up to University’s receipt of such notification. Failure to provide any notification shall be considered by University to be Licensee’s notice that it expressly wishes to support any particular patent(s) or patent application(s). Upon notice that Licensee elects not to have a patent application filed or patent maintained in any particular country, or not to pay expenses associated with prosecuting or maintaining any patent application or patent, University may at its sole discretion file, prosecute, and/or maintain such patent applications or patents at its own expense and for its own benefit, and any rights or license granted hereunder held by Licensee, Affiliates, or Sublicensee(s) to such patent application(s) or patent(s) shall terminate and the parties shall amend Appendix A to reflect the then current Patent Rights or Copyrights.
Patent Prosecution and Maintenance. 9.1.1 Kite shall, at its sole cost, be responsible for all the preparation, filing, prosecution and maintenance after the Effective Date of the Licensed Patent Rights listed under the heading Eshhar patents listed on Exhibit A or related thereto (the “Eshhar Patent Rights”). Kite shall give Cabaret an opportunity to review and comment on the text of each patent application subject to this Section 9.1.1 before filing, and shall supply Cabaret with a copy of such patent application as filed, together with notice of its filing date and serial number. Cabaret shall, at Kite’s expense, cooperate with Kite, execute all lawful papers and instruments and make all rightful oaths and declarations as may be necessary in the preparation, prosecution and maintenance of all patents and other filings referred to in this Section 9.
1.1. If Kite, in its sole discretion, decides to abandon the preparation, filing, prosecution or maintenance of any patent or patent application subject to this Section 9.1.1, then Kite shall notify Cabaret in writing thereof and following the date of such notice (a) Cabaret shall be responsible for and shall control, at its sole cost, the preparation, filing, prosecution and maintenance of such patents and patent applications, and (b) Kite thereafter shall have no license under this Agreement to such patent or patent application.
9.1.2 To the extent Cabaret is permitted to grant such rights to Kite, Kite shall have all rights of Cabaret regarding the preparation, filing, prosecution and maintenance after the Effective Date of all patents and patent applications within the Licensed Patent Rights other than the Eshhar Patent Rights.
Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 3 shall control the prosecution and maintenance of any patent application and any patent included within Scripps Patent Rights. Subject to the requirements, limitations, and conditions set forth in this Agreement, Scripps shall direct and control (i) the preparation, filing, and prosecution of the United States and foreign patent applications within Scripps Patent Rights (including any interferences and foreign oppositions) and (ii) maintain the patents issuing therefrom. Scripps shall select the patent attorney, which may be independent outside counsel specialized in the Field, subject to Licensee's written approval, which approval shall not be unreasonably withheld. Both parties hereto agree that Scripps may, at its sole discretion, utilize Scripps's Office of Patent Counsel in lieu of independent counsel for patent prosecution and maintenance described herein, and the fees and expenses incurred by Scripps with respect to work done by such Office of Patent Counsel shall be paid as set forth below. Licensee shall have full rights of consultation with the patent attorney so selected on all matters relating to Scripps Patent Rights. Scripps shall use its best efforts to implement all reasonable requests made by Licensee with regard to the preparation, filing, prosecution and/or maintenance of the patent applications and/or patents within Scripps Patent Rights.
Patent Prosecution and Maintenance. 6.1 Following the Effective Date, Company shall, at Company’s expense, diligently prosecute and maintain the Patent Rights (as the same may be amended or supplemented from time to time after the date hereof), including the filing of patent applications, extensions, continuations, continuations in part, divisionals, re-examinations, or re-issue applications which Company determines may be required to advance the purposes of this Agreement or otherwise to protect the rights and licenses granted hereunder. Company shall keep Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities and will consult in good faith with the Licensor and take into account Licensor’s comments and requests with respect thereto. Notwithstanding the foregoing, Company shall diligently seek and maintain broad intellectual property protection for the Licensed Products and Licensed Processes to protect Licensor’s rights and shall not reduce or narrow the scope of any claim of the Patent Rights without Licensor’s prior written consent, which shall not be unreasonably withheld. Both parties shall reasonably cooperate with each other to facilitate the application and prosecution of the Patent Rights pursuant to this Agreement. As of the Effective Date, Licensor has incurred $[…***…] for fees and costs, including attorney’s fees, relating to the filing, prosecution and maintenance of the Patent Rights (the “Patent Costs”). Company shall reimburse Licensor for […***…] in two equal payments, one due on the Effective Date and the other on […***…], provided, however, […***…] percent ([…***…]%) of the Patent Costs ($[…***…]) shall be credited against the fee owed to Licensor under Article 4.4.3 and ([…***…]%) of the Patent Costs ($[…***…]) shall be credited against the fee owed to Licensor under Article 4.4.4.
6.2 Subject to Company’s obligation to diligently seek and maintain patent protection for a Licensed Products and Licensed Processes, Company may elect to abandon any patent applications or issued patents in the Patent Rights. Following such abandonment, Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its own expense and Company shall no longer have any rights under or to such abandoned Patent Rights, except for those rights that any third party not a party to this Agreement would have relating ...
Patent Prosecution and Maintenance. 6.1 Within three months from the execution of this Agreement the parties shall set forth a procedure by which the Licensor will monitor the Patents and Patent Rights as set forth in Schedule A hereto (as the same may be amended or supplemented from time to time after the date hereof), for which the Company will be responsible to diligently prosecute and maintain in the Territory the Patent Rights including, but not limited to, the filing of patent applications for inventions and improvements to the Invention, discovered by the Licensor or the Company, utilizing such patent counsel as may be mutually agreed upon by the parties hereto. The Company agrees to keep the Licensor reasonably well informed with respect to the status and progress of any such applications, prosecutions and maintenance activities and to consult in good faith with the Licensor and take into account the Licensor's comments and requests with respect thereto. Both parties agree to provide reasonable cooperation to each other to facilitate the application and prosecution of patents pursuant to this Agreement.
6.2 The Company may, in its discretion, elect to abandon any patent application or issued patent comprising the Patents Rights, in which case the Company shall make no further use of such Patent Rights and shall have no further royalty obligation to the Licensor in respect of any Licensed Products and Licensed Processes the manufacture, use or sale of which is covered by an issued claim of such abandoned Patent Rights. Prior to any such abandonment, the Company shall give the Licensor at least 60 days notice and a reasonable opportunity to assume prosecution of such Patent Rights. In such event, the Licensor shall have the right, but not the obligation, to commence or continue such prosecution and to maintain any such Patent Rights under its own control and at its expense and the Company shall then make no further use of any such Patent Rights and shall have no royalty or other obligation to the Licensor in respect of any Licensed Products and Licensed Processes, the manufacture, use or sale of which is covered by an issued claim of such Patent Rights. The Company agrees to cooperate in such activities, including execution of any assignment or other documents necessary to enable the Licensor to obtain and retain sole ownership and control of such Patent Rights.
Patent Prosecution and Maintenance. For all Institute-Funded Inventions for which patent protection is pursued, RECIPIENT shall provide an annual written report to the INSTITUTE regarding the status of pending applications and issued patents that are Institute-Funded IPR.
Patent Prosecution and Maintenance. (a) It is the intention of the parties to secure patent protection for Inventions. Roche shall be responsible for the preparation, filing, prosecution and maintenance of all Roche Patents at Roche’s sole expense. Emisphere shall be responsible for the preparation, filing, prosecution and maintenance of all Emisphere Patents at Emisphere’s sole expense. Each party shall consider in good faith the requests and suggestions of the other party with respect to strategies for filing and prosecuting Patents claiming Products being developed or commercialized by Roche under this Agreement, or the manufacture or use of such Products. The party responsible for the filing, prosecution, maintenance, enforcement and defense of any such Patents shall keep the other party informed of progress with regard thereto. In the event that Emisphere desires to abandon any Product-Specific Emisphere Patent, Emisphere shall provide reasonable prior written notice to Roche of such intention to abandon, and Roche shall have the right, at its expense, to prepare, file, prosecute, and maintain such Product-Specific Emisphere Patent in Roche’s name. For purposes of clarification, in no event shall Roche have the right to prepare, file, prosecute or maintain any Emisphere Patent other than a Product-Specific Patent as to which Emisphere provides Roche written notice in accordance with the preceding sentence.
(b) The parties shall mutually agree on a case-by-case basis which party (the “Responsible Party”) will be responsible for the preparation, filing, prosecution and maintenance of Joint Patents; provided, however, that Emisphere shall be the Responsible Party with respect to Joint Patents claiming any Carrier, the composition of matter of any Carrier, or a method of manufacturing or using any Carrier, and Roche shall be the Responsible Party with respect to Joint Patents claiming any therapeutic use of ***. The parties shall share equally (50%/50%) the cost of preparation, filing, prosecution and maintenance of Joint Patents; provided, however, that Emisphere shall be solely responsible for the costs with respect to Joint Patents claiming any Carrier, the composition of matter of any Carrier, or a method of manufacturing or using any Carrier, and Roche shall be solely responsible for the costs with respect to Joint Patents claiming any therapeutic use of ***. The Responsible Party shall consult with the other party as to the preparation, filing, prosecution and maintenance of such Join...
Patent Prosecution and Maintenance. Oxis shall have the right to control, at its sole cost, the preparation, filing, prosecution and maintenance of all patents and patent applications within the Licensed Patent Rights. Oxis shall give Licensor an opportunity to review and comment on the text of each patent application subject to this Section 9.1 before filing, and shall supply Licensor with a copy of such patent application as filed, together with notice of its filing date and serial number. Licensor shall cooperate with Oxis, execute all lawful papers and instruments and make all rightful oaths and declarations as may be necessary in the preparation, prosecution and maintenance of all patents and other filings referred to in this Section 9.1. If Oxis, in its sole discretion, decides to abandon the preparation, filing, prosecution or maintenance of any patent or patent application in the Licensed Patent Rights, then Oxis shall notify Licensor in writing thereof and following the date of such notice (a) Licensor shall be responsible for and shall control, at its sole cost, the preparation, filing, prosecution and maintenance of such patents and patent applications, and (b) Oxis shall thereafter have no license under this Agreement to such patent or patent application.
Patent Prosecution and Maintenance. From and after the date of this Agreement, the provisions of this Section 8 shall control the prosecution of any patent application and maintenance of any patent included within Licensed Patent Rights. TSRI shall (a) direct and control the preparation, filing and prosecution of the United States and foreign patent applications within Licensed Patent Rights (including without limitation any reissues, reexaminations, appeals to appropriate patent offices and/or courts, interferences and foreign oppositions); and (b) maintain the patents issuing therefrom. TSRI shall select the patent attorney, subject to Licensee’s written approval, which approval shall not be unreasonably withheld. Both parties agree that TSRI shall have the right, at its sole discretion, to utilize TSRI’s Office of Patent Counsel in lieu of or in addition to independent counsel for patent prosecution and maintenance described herein, and the fees and expenses associated with the work done by such Office of Patent Counsel and/or independent patent counsel with regard to the preparation, filing and prosecution of patent applications and maintenance of patents included within Licensed Patent Rights shall be paid as set forth below. Licensee shall have full rights of consultation with the patent attorney so selected on all matters relating to Licensed Patent Rights. TSRI shall use its reasonable efforts to implement all reasonable and timely requests made by Licensee with regard to the preparation, filing, prosecution and/or maintenance of the patent applications and/or patents within Licensed Patent Rights.