Patent Prosecution. 10.1 The filing and prosecution of the U.S. and foreign patent applications and maintenance of all U.S. and foreign patents within the WFUHS Patent Rights will be managed by WFUHS; provided, however, that, Tengion will have the reasonable right to comment upon the management, prosecution and maintenance of such patent application(s) and issued patents, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations of the JPC. Patent counsel for the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights shall be selected by WFUHS but shall be reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property). WFUHS will consult Tengion and will keep Tengion reasonably informed of all matters relating to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS will provide Tengion with copies of all material correspondence with the applicable patent office in such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights. 10.2 In the event Tengion determines that filing, prosecution or maintenance of any U.S. or foreign Improvement Patent or any patent or patent application relating to a Deferred Invention is not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other terms. 10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24 10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the filing, prosecution and maintenance of such application or patent at Tengion’s expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10.
Appears in 2 contracts
Sources: License Agreement (Tengion Inc), License Agreement (Tengion Inc)
Patent Prosecution. 10.1 The filing and prosecution 18.2.1 In respect of the U.S. Licensed Patents:
(i) UCLB shall not Surrender any of them without the prior written consent of Autolus;
(ii) from the Effective Date and foreign patent applications during the Term for so long as Autolus holds a licence to the same, subject to Clause 18.2.2 Autolus shall at its expense have the exclusive control and conduct of all on-going prosecution and maintenance steps in respect of all U.S. and foreign patents within the WFUHS Licensed Patents but excluding the RQR8 Patent Rights, the CAT19 Patent Rights, the TetCAR Patent Rights will be managed and the [***] Existing Patent (the “Responsible Patents”);
(iii) UCLB shall provide all reasonable or appropriate assistance and cooperation required by WFUHS; provided, however, that, Tengion will have Autolus to enable Autolus to efficiently and effectively discharge the reasonable right to comment upon the management, prosecution and maintenance of such the Responsible Patents and in doing so, UCLB shall follow all directions and instructions of Autolus and do all things reasonably required by Autolus with respect to the Responsible Patents;
(iv) UCLB shall ensure that all documents and correspondence that it, or its agents or other licensees receive in connection with any of the Licensed Patents shall be promptly and in any event within seven (7) days forwarded to Autolus, and without limiting the foregoing, UCLB shall keep Autolus promptly informed in advance of any steps taken regarding the RQR8 Patent Rights, the CAT19 Patent Rights, the TetCAR Patent Rights and the [***] Existing Patent;
(v) UCLB shall instruct those professional advisors, patent application(s) agents and issued patents, including the reasonable right to offer comments and advice regarding strategic and tactical decisions lawyers who act on behalf of UCLB in the prosecution of the Responsible Patents to co-operate with Autolus, accept instructions from Autolus as if they were direct from UCLB and maintenance process; provide all history on the prosecution of the Responsible Patents to Autolus;
(vi) Autolus shall be entitled, at its discretion and cost, to appoint alternative counsel to take over the prosecution of the Responsible Patents;
(vii) UCLB shall promptly notify Autolus of any threatened or actual claim of invalidity or revocation or opposition of any of the Licensed Patents and shall provide full details and all such information available to it regarding such threatened or actual claim. Autolus shall have the right (but not obligation) to control, direct any actions for invalidity, revocation or oppositions issued against the Responsible Patents. UCLB shall do (or not do) all such things as are reasonably directed by Autolus to enable Autolus to control, direct and conduct such proceedings, including allowing Autolus’s legal representatives to conduct such proceedings in UCLB’s name where required or beneficial provided furtherthat Autolus indemnifies UCLB and/or its Affiliates for any Third Party costs, that WFUHS damages, expenses or liability incurred by UCLB and/or its Affiliates as a direct result of UCLB and/or its Affiliates assisting Autolus to conduct such proceedings subject to Clause 18.9. Autolus shall retain pay UCLB for any reasonable (economy) travel and reasonable subsistence costs incurred by UCLB and/or its Affiliates as a result of assisting Autolus under this Clause 18.2.1(vii);
(viii) in respect of the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS RQR8 Patent Rights, the CAT19 Patent Rights, the TetCAR Patent Rights and the [***] Existing Patent, if the validity of any of them is challenged and UCLB (or its other licensees) does not defend such challenge, then Autolus shall have the right (but not the obligation) to control, direct and conduct such proceedings. In carrying out these activitiesUCLB shall do (or not do) all such things as are reasonably directed by Autolus to enable Autolus to control, WFUHS will consider direct and conduct such proceedings, including allowing Autolus’s legal representatives to conduct such litigation in good faith the recommendations UCLB’s name where required or beneficial provided that Autolus indemnifies UCLB and/or its Affiliates for any Third Party costs, damages, expenses or liability incurred by UCLB and/or its Affiliates as a direct result of assisting Autolus subject to Clause 18.9. Autolus shall pay UCLB’s and/or its Affiliates for any reasonable (economy) travel and reasonable subsistence costs incurred by UCLB and/or its Affiliates as a result of assisting Autolus under this Clause 18.2.1(viii). Autolus shall consult and co-operate with UCLB and its licensees outside of the JPC. RQR8 Field and/or under the CAT19 Patent counsel Rights and the TetCAR Patent Rights if it elects to defend such challenge;
(ix) UCLB shall provide assistance to and co-operate with Autolus in accordance with this Clause 18 without any further cost to Autolus, save that (i) if UCLB personnel are required to participate in any opposition proceeding (or comparable proceeding before patent offices and courts) which requires full time involvement for more than [***] per annum per Program IP under any Program Licence, then for such excess co-operation beyond the [***] for that Program IP Autolus shall reimburse UCLB its reasonable costs, and (ii) this provision shall be without prejudice to the indemnity given in Clauses 18.2.1(vii) or 18.2.1(viii); and,
(x) any enforcement of the Licensed Patents shall be subject to Clause 19.
18.2.2 In respect of the Responsible Patents, Autolus shall:
(i) subject to UCLB’s compliance with Clause 18.2.1, be responsible for the Patent Prosecution Costs for the Responsible Patents;
(ii) keep UCLB informed of developments in the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights Responsible Patents and shall provide UCLB with copies of all material correspondence to and from its patent attorneys or patent offices in relation to the Responsible Patents and shall provide UCLB reasonable notice of and the opportunity at its own cost to participate in any conference calls or meetings with Autolus’s patent attorneys in relation to the drafting, filing, prosecution and maintenance of the Responsible Patents;
(iii) consult with UCLB in connection with Autolus’s strategy for the prosecution and maintenance of the Responsible Patents;
(iv) take into account any reasonable comments and suggestions of UCLB in relation to the prosecution and maintenance of the Responsible Patents; and
(v) notify UCLB in advance of any steps Autolus proposes be selected taken which would change the specification or reduce the scope of the claims of any Responsible Patent, and having done so shall take into account any reasonable comments and suggestions promptly proposed by WFUHS but shall be reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect UCLB in relation to such firm’s expertise steps.
18.2.3 In respect of the [***] Existing Patent:
(i) UCLB shall, subject to Clause 7.2, be responsible for all the Patent Prosecution Costs of the prosecution and competence in maintenance of the substantive law same;
(ii) UCLB and Autolus shall collaborate to define the optimal strategy for filing, maintenance and prosecution of intellectual property). WFUHS will consult Tengion and will the [***] Existing Patent; and
(iii) UCLB shall keep Tengion reasonably Autolus informed of all matters developments relating to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS will provide Tengion with copies of all material correspondence with the applicable patent office in such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights[***] Existing Patents.
10.2 In the event Tengion determines that filing, prosecution or maintenance of any U.S. or foreign Improvement Patent or any patent or patent application relating to a Deferred Invention is not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other terms.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the filing, prosecution and maintenance of such application or patent at Tengion’s expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10.
Appears in 2 contracts
Sources: License Agreement (Autolus Therapeutics LTD), License Agreement (Autolus Therapeutics LTD)
Patent Prosecution. 10.1 The filing A. Orion shall file, prosecute and prosecution maintain all of the U.S. and foreign patent applications and maintenance Patent that are the property of all U.S. and foreign patents within the WFUHS Patent Rights will be managed by WFUHS; provided, however, that, Tengion will have the reasonable right to comment upon the management, prosecution and maintenance of such patent application(s) and issued patents, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long Orion as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations of the JPC. Patent counsel for the preparation, filing, prosecution and maintenance date of the WFUHS Patent Rights this Agreement.
B. Bioenvision shall be selected by WFUHS but shall be reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property). WFUHS will consult Tengion and will keep Tengion reasonably informed of bear all matters relating patenting expenses related to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS will provide Tengion with copies of all material correspondence with the applicable patent office in such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights.
10.2 In the event Tengion determines that filing, prosecution or maintenance of all Patent and Improvement licensed hereunder in whole or in part.
C. Orion shall furnish Bioenvision with copies of all allowed claims when such claims are allowed in the Field and in the Territory for all Patent and Improvement licensed hereunder.
D. Orion shall provide Bioenvision with draft copies of all correspondence and filings and related prosecution documents on the Patent and Improvement licensed hereunder and Bioenvision shall promptly provide comments, if any, to Orion. Orion shall confer with Bioenvision, and make reasonable efforts to adopt Bioenvision's suggestions regarding prosecution tactics and strategy. Notwithstanding the foregoing, Orion shall have the right to take such actions as are reasonably necessary, in its good faith judgement, to preserve all rights under the Patent and Improvement throughout the Territory. As soon as practical, subsequent to the filing of any U.S. or foreign Improvement Patent or any patent or patent application relating to prosecution document, Orion shall provide Bioenvision with a Deferred Invention is not justified (a “Surrendered Patent”), Tengion will notify WFUHS copy of such determination document. In addition, Orion shall copy Bioenvision with any official office action and Orion responses and submissions. Bioenvision shall bear the expenses of the activities noted in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than this Article 11.E.
E. Orion will inform Bioenvision at least sixty (60) days before prior to any response or action is needed to preserve and decision having as a result the Surrendered Patent. WFUHS will then have the option failure to file, prosecute or the abandonment of Patent applications or failure to maintain a Patent, Patents and Improvements licensed hereunder so that Bioenvision may take over and maintain such Patent and Improvements in force.
F. Provided that Orion has been informed by Bioenvision at least sixty (60) days in advance, in the event that Bioenvision decides not to pay patenting expenses in any jurisdiction, Orion may elect to maintain such Patent and Improvements in force and terminate Bioenvision's licenses granted as for the jurisdiction in which Bioenvision abandoned or failed to file or maintain the Surrendered such Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other termsrights.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the filing, prosecution and maintenance of such application or patent at Tengion’s expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10.
Appears in 1 contract
Patent Prosecution. 10.1 The filing (a) Institute shall have the first right, and prosecution shall use Commercially Reasonable Efforts to diligently prosecute and maintain the Patent Rights existing as of the U.S. Original Effective Date and foreign patent applications and maintenance of all U.S. and foreign patents within licensed to Licensee hereunder (the WFUHS “Base Patent Rights will be managed by WFUHS; providedRights”) at Licensee’s expense, however, that, Tengion will have the reasonable right to comment upon the management, prosecution and maintenance of such patent application(s) and issued patents, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s using United States based patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations of the JPC. Patent counsel for the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights shall be selected by WFUHS but shall be its choice reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property)Licensee. WFUHS will consult Tengion and will keep Tengion reasonably informed of all matters relating to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS Institute will provide Tengion Licensee promptly with copies of all material correspondence with relevant documentation so that Licensee will be informed of the applicable patent office continuing prosecution and may comment upon such documentation sufficiently in advance of any initial deadline for filing a response. Institute agrees that it will incorporate any reasonable comments by Licensee in relation to such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege prosecution activities, provided that with respect to any claims of the Base Patent Rights that relate directly to Licensed Products or the manufacture or use thereof, Licensee shall have the right to make the final decision regarding prosecution of such claims, including the filing of any new claims relating to Licensed Products or the manufacture or use thereof. Licensee agrees that all documentation relating to the prosecution and maintenance of the WFUHS Patent RightsRights shall be the Confidential Information of both Parties. Without limiting the foregoing, Institute shall use all reasonable efforts to amend any patent application to include claims reasonably requested by Licensee to protect the products contemplated to be sold under this Agreement and the activities being conducted under the Research Agreement.
10.2 In (b) Licensee shall have the event Tengion determines first right, and shall use Commercially Reasonable Efforts to diligently prosecute and maintain any patents and patent applications arising from activities conducted under the Research Agreement that filingrelate to (i) Allogeneic CTLs or Allogeneic CTL Products, prosecution or maintenance and (ii) Autologous CTL Products that are EBV-Specific CTL Products, and (iii) New CTL Products and Program [***], in each case of any U.S. or foreign Improvement Patent or (i), (ii) and (iii), provided that such patents and patent applications do not claim priority to any patent or patent application relating to a Deferred Invention is not justified included in the Base Patent Rights (a in which case Section 13.2(a) shall apply) (the “Surrendered PatentResearch Agreement Patent Rights”), Tengion will notify WFUHS at Licensee’s expense, using United States based patent counsel of such determination in writingits choice reasonably acceptable to Institute; provided, thereby surrendering its rights to the Surrendered Patenthowever, such notice to be given no fewer than sixty that Institute shall reimburse Licensee for fifty percent (6050%) days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other terms.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting prosecution and maintenance of Improvement Patents that are costs (including attorney’s fees) incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume by Licensee for the filing, prosecution and maintenance of any patents and patent applications claiming priority to, or having common priority with, PCT Application Number PCT/AU2013/001216 (“Improved Human Herpesvirus Immunotherapy”) (including such patent application itself). For clarity, any Patent Rights Controlled by Institute as of the date upon which the Parties mutually agree in writing to include a New Research Program within the Research Agreement, and New CTL Products arising from such New Research Program within the scope of this Agreement (each, a “New Research Program Inclusion Date”) that relate specifically to such New Research Program (including the Target thereof) or such New CTL Products (the “New Research Patent Rights”) shall be considered Research Agreement Patent Rights as of the New Research Program Inclusion Date, and shall be subject to this Section 13.2. Promptly following any New Research Program Inclusion Date, unless the Parties otherwise agree in writing, Institute will transfer to Licensee, or to counsel of Licensee’s choice reasonably acceptable to Institute, all relevant documentation required for Licensee to assume responsibility for prosecution and maintenance of such New Research Patent Rights. Following the New Research Program Inclusion Date, Licensee will provide Institute promptly with copies of all relevant documentation so that Institute will be informed of the continuing prosecution and may comment upon such documentation sufficiently in advance of any initial deadline for filing a response. Licensee agrees that it will incorporate any reasonable comments by Institute in relation to such prosecution activities, provided that with respect to any claims of the Research Agreement Patent Rights that relate directly to Autologous CTLs or Autologous CTL Products, or the manufacture or use thereof, Institute shall have the right to make the final decision regarding prosecution of such claims, including the filing of any new claims relating to Autologous CTLs or Autologous CTL Products, or the manufacture or use thereof.
(c) Each Party agrees that all documentation relating to the prosecution and maintenance of the Patent Rights shall be the Confidential Information of both Parties. Without limiting the foregoing, Institute shall use all reasonable efforts to amend any patent application to include claims reasonably requested by Licensee to protect the products contemplated to be sold under this Agreement and the activities being conducted under the Research Agreement.
(d) The Parties agree that as of the Execution Date, Institute shall have the sole right to prosecute and maintain, and Licensee shall have no obligation to pay any costs or expenses incurred after the Execution Date in relation to the prosecuting and maintaining of, the patent applications listed in Schedule 13.2 or any patent or patent at Tengion’s expenseapplication claiming priority thereto, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10or having common priority therewith.
Appears in 1 contract
Sources: Exclusive License Agreement (Atara Biotherapeutics, Inc.)
Patent Prosecution. 10.1 The filing (a) Institute shall have the first right, and prosecution shall use Commercially Reasonable Efforts to diligently prosecute and maintain the Patent Rights existing as of the U.S. Original Effective Date and foreign patent applications and maintenance of all U.S. and foreign patents within licensed to Licensee hereunder (the WFUHS “Base Patent Rights will be managed by WFUHS; providedRights”) at Licensee’s expense, however, that, Tengion will have the reasonable right to comment upon the management, prosecution and maintenance of such patent application(s) and issued patents, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s using United States based patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations of the JPC. Patent counsel for the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights shall be selected by WFUHS but shall be its choice reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property)Licensee. WFUHS will consult Tengion and will keep Tengion reasonably informed of all matters relating to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS Institute will provide Tengion Licensee promptly with copies of all material correspondence with relevant documentation so that Licensee will be informed of the applicable patent office continuing prosecution and may comment upon such documentation sufficiently in advance of any initial deadline for filing a response. Institute agrees that it will incorporate any reasonable comments by Licensee in relation to such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege prosecution activities, provided that with respect to any claims of the Base Patent Rights that relate directly to Licensed Products or the manufacture or use thereof, Licensee shall have the right to make the final decision regarding prosecution of such claims, including the filing of any new claims relating to Licensed Products or the manufacture or use thereof. Licensee agrees that all documentation relating to the prosecution and maintenance of the WFUHS Patent RightsRights shall be the Confidential Information of both Parties. Without limiting the foregoing, Institute shall use all reasonable efforts to amend any patent application to include claims reasonably requested by Licensee to protect the products contemplated to be sold under this Agreement and the activities being conducted under the Research Agreement.
10.2 In (b) Licensee shall have the event Tengion determines first right, and shall use Commercially Reasonable Efforts to diligently prosecute and maintain any patents and patent applications arising from activities conducted under the Research Agreement that filingrelate to (i) Allogeneic CTLs or Allogeneic CTL Products, prosecution or maintenance and (ii) Autologous CTL Products that are EBV-Specific CTL Products, and (iii) New CTL Products and Program [ * ], in each case of any U.S. or foreign Improvement Patent or (i), (ii) and (iii), provided that such patents and patent applications do not claim priority to any patent or patent application relating to a Deferred Invention is not justified included in the Base Patent Rights (a in which case Section 13.2(a) shall apply) (the “Surrendered PatentResearch Agreement Patent Rights”), Tengion will notify WFUHS at Licensee’s expense, using United States based patent counsel of such determination in writingits choice reasonably acceptable to Institute; provided, thereby surrendering its rights to the Surrendered Patenthowever, such notice to be given no fewer than sixty that Institute shall reimburse Licensee for fifty percent (6050%) days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other terms.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting prosecution and maintenance of Improvement Patents that are costs (including attorney’s fees) incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume by Licensee for the filing, prosecution and maintenance of any patents and patent applications claiming priority to, or [*]= Certain confidential information contained in this document, marked by brackets, is omitted because it is both (i) not material and (ii) would be competitively harmful if publicly disclosed. having common priority with, PCT Application Number PCT/AU2013/001216 (“Improved Human Herpesvirus Immunotherapy”) (including such patent application or patent at Tengion’s expenseitself). For clarity, but without any additional consideration payable to WFUHS, except reimbursement Patent Rights Controlled by Institute as of the costs date upon which the Parties mutually agree in writing to include a New Research Program within the Research Agreement, and New CTL Products arising from such New Research Program within the scope of implementing this Agreement (each, a “New Research Program Inclusion Date”) that relate specifically to such New Research Program (including the Target thereof) or such New CTL Products (the “New Research Patent Rights”) shall be considered Research Agreement Patent Rights as of the New Research Program Inclusion Date, and shall be subject to this Section 13.2. Promptly following any New Research Program Inclusion Date, unless the Parties otherwise agree in writing, Institute will transfer to Licensee, or to counsel of Licensee’s choice reasonably acceptable to Institute, all relevant documentation required for Licensee to assume responsibility for prosecution and maintenance of such rights and payment New Research Patent Rights. Following the New Research Program Inclusion Date, Licensee will provide Institute promptly with copies of all patent costs through the effective date relevant documentation so that Institute will be informed of the transfer continuing prosecution and may comment upon such documentation sufficiently in accordance advance of any initial deadline for filing a response. Licensee agrees that it will incorporate any reasonable comments by Institute in relation to such prosecution activities, provided that with Article 10respect to any claims of the Research Agreement Patent Rights that relate directly to Autologous CTLs or Autologous CTL Products, or the manufacture or use thereof, Institute shall have the right to make the final decision regarding prosecution of such claims, including the filing of any new claims relating to Autologous CTLs or Autologous CTL Products, or the manufacture or use thereof.
Appears in 1 contract
Sources: Exclusive License Agreement (Atara Biotherapeutics, Inc.)
Patent Prosecution. 10.1 (a) The filing and prosecution Genelabs Patents in existence as of the U.S. and foreign patent applications and maintenance of all U.S. and foreign patents within Effective Date are listed in Exhibit 1.B hereto. The Parties shall update such Exhibit as appropriate (at least once per Calendar Quarter) to add to Exhibit 1.B each Collaboration Patent filed after the WFUHS Patent Rights Effective Date.
(b) Genelabs will be managed by WFUHS; providedsolely responsible, howeverin consultation with PHARMA, thatfor filing, Tengion will have prosecuting and maintaining the reasonable Genelabs Patents, at its own expense, with PHARMA having the right to review and comment upon the management, prosecution on strategic decisions and maintenance drafts of such substantive patent application(s) and issued patents, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications submissions with respect thereto. WFUHS Genelabs shall comply with, and incorporate in the applicable patent submissions, all PHARMA comments submitted pursuant to the foregoing sentence, unless Genelabs has reasonable objection thereto and discusses such objections with PHARMA. With respect to each Genelabs Patent, Genelabs shall prosecute such Patent in the jurisdictions set forth on Exhibit 7.2 as being Genelabs’ responsibility. Genelabs will exercise commercially reasonable diligence in applying for, seeking prompt issuance of keep PHARMA regularly and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations fully informed of the JPC. Patent counsel for the preparation, filing, prosecution status of such Genelabs Patents and maintenance of the WFUHS Patent Rights shall be selected by WFUHS but shall be reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property). WFUHS will consult Tengion and will keep Tengion reasonably informed of all matters relating to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS will provide Tengion with copies of all material correspondence with substantive documentation submitted to, or received from, the applicable patent office offices in such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rightsconnection therewith.
10.2 (c) In the event Tengion determines that filing, prosecution or maintenance of any U.S. or foreign Improvement Patent or any patent or patent application relating to a Deferred Invention is not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option Genelabs declines to file, prosecute or maintain any Genelabs Patent, it shall give PHARMA reasonable notice of at least [**] to this effect, sufficiently in advance to permit PHARMA to undertake such filing, prosecution and maintenance without a loss of rights, and thereafter PHARMA may, upon written notice to Genelabs, file and prosecute such Genelabs Patents and maintain such Genelabs Patents in Genelabs’ name, all at PHARMA’s expense (subject to the Surrendered Patent at its own expenseimmediately following sentence), and all such Genelabs Patents shall remain owned exclusively by Genelabs, subject to the provisions of Section 3.1. FurtherIf PHARMA incurs filing, WFUHS prosecution and/or maintenance expenses with respect to Genelabs Patents owned by Genelabs in accordance with the immediately preceding sentence, PHARMA shall be entitled to deduct [**] from the payments due for [**] payable to Genelabs pursuant to this Agreement, subject to the Agreed Limit. Any portion of such expenses that PHARMA is entitled to deduct in accordance with the foregoing but which PHARMA is unable to deduct in any Calendar Quarter due to application of the Agreed Limit shall be rolled forward and deducted in the next Calendar Quarter for purposes hereof (subject to the Agreed Limit in such next Calendar Quarter) and so on until PHARMA has fully deducted the full amount of such expenses. PHARMA will then keep Genelabs regularly and fully informed of the status of such Genelabs Patents and provide copies of all substantive documentation submitted to, or received from, the patent offices in connection therewith. Genelabs shall have the sole right to delete review and comment on strategic decisions and drafts of substantive patent submissions with respect thereto. PHARMA shall comply with, and incorporate in the Surrendered Patent from applicable patent submissions, all Genelabs comments submitted pursuant to the license or option rights of Tengion under this Agreement for foregoing sentence, unless PHARMA has reasonable objection thereto and discusses such objections with Genelabs.
(d) PHARMA may, but is not obligated, to file and prosecute Genelabs Patents and maintain such Genelabs Patents in Genelabs’ name, all at PHARMA’s expense (subject to the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to immediately following sentence), in the countries listed on Exhibit 7.2 as being PHARMA’s responsibility and in any other party on any other terms.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, countries in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS and all such Genelabs Patents shall so notify Tengion andremain owned exclusively by Genelabs, subject to the provisions of Section 3.1. If PHARMA incurs filing, prosecution and/or maintenance expenses with respect to Genelabs Patents owned by Genelabs in accordance with the immediately preceding sentence, PHARMA shall be entitled to deduct [**] from the payments due for [**] payable to Genelabs pursuant to this Agreement, subject to the Agreed Limit. Any portion of such expenses that PHARMA is entitled to deduct in accordance with the foregoing but which PHARMA is unable to deduct in any rights Calendar Quarter due to application of the U.S. governmentAgreed Limit shall be rolled forward and deducted in the next Calendar Quarter for purposes hereof (subject to the Agreed Limit in such next Calendar Quarter) and so on until PHARMA has fully deducted the full amount of such expenses. PHARMA will keep Genelabs regularly and fully informed of the status of such Genelabs Patents and provide copies of all substantive documentation submitted to, if anyor received from, under Public Law 96-517the patent offices in connection therewith. Genelabs shall have the right to review and comment on strategic decisions and drafts of substantive patent submissions with respect thereto. PHARMA shall comply with, 97-226 and 98-620incorporate in the applicable patent submissions, codified all Genelabs comments submitted pursuant to the foregoing sentence, unless PHARMA has reasonable objection thereto and discusses such objections with Genelabs. In the event that PHARMA declines to file, prosecute or maintain any Genelabs Patent, it shall give Genelabs reasonable notice of at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunderleast [**] to this effect, shall authorize Tengion sufficiently in advance to assume the permit Genelabs to undertake such filing, prosecution and maintenance without a loss of rights, and cooperate in transferring prosecution rights and applicable patent files to Genelabs. Such Patents transferred to Genelabs shall remain subject to the provisions of Section 3.1.
(e) PHARMA will be solely responsible for filing, prosecuting and maintaining the PHARMA Patents at its own expense.
(f) PHARMA will be responsible for filing, prosecuting and maintaining Joint Patents, with Genelabs having the right to review and comment on drafts of substantive patent submissions with respect thereto. PHARMA will keep Genelabs regularly and fully informed of the status of such application Joint Patents and provide copies of all substantive documentation submitted to, or received from, the patent offices in connection therewith. Genelabs will assist PHARMA in connection with the prosecution and maintenance of such Joint Patents, including by providing access to relevant Persons and executing and producing all required documentation.
(g) PHARMA shall give timely notice to Genelabs of any decision not to file applications for, or to cease prosecution and/or maintenance of any Joint Patent, or not to continue to pay the expenses of prosecution and/or maintenance of any Joint Patent, on a country-by-country basis and shall permit Genelabs, at Tengion’s its sole discretion and expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer file or to continue prosecution or maintenance of such rights and Joint Patent. PHARMA will provide such notice at least [**] prior to any filing or payment of all patent costs through the effective due date, or any other due date of the transfer that requires action, in connection with such Patent.
(h) The Parties agree that Joint Patents shall be exclusively licensed to PHARMA in accordance with Article 10the terms of this Agreement.
Appears in 1 contract
Sources: License and Research Collaboration Agreement (Genelabs Technologies Inc /Ca)
Patent Prosecution. 10.1 The filing and prosecution of the U.S. and foreign patent applications and maintenance of all U.S. and foreign patents within the WFUHS Patent Rights 8.1. Hoth agrees that it will be managed by WFUHS; provided, however, that, Tengion will have the reasonable right to comment upon the management, solely responsible for any and all patent prosecution and maintenance costs related to the Patent Rights licensed hereunder from the Effective Date of this Agreement. Hoth agrees to either pay such patent application(s) and issued patents, including costs directly or to reimburse Chelexa for such costs to the reasonable right extent that Chelexa is obligated to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS pay over such costs to UC.
8.2. Hoth shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations of the JPC. Patent counsel arrange for the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights shall be selected by WFUHS but shall be reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect to such firm’s expertise any and competence all patent applications and patents included in the substantive law Invention Right s by counsel of intellectual property)its own selection. WFUHS will Hoth shall consult Tengion and will keep Tengion reasonably informed of all matters relating with Chelexa as to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing such patent applications and patents and shall furnish to Tengion the complete text of all patent applications. In addition, WFUHS will provide Tengion with Chelexa copies of all material correspondence with documents relevant to any such preparation, filing, prosecution or maintenance. To the applicable patent office in such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to extent Hoth arranges for the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights.
10.2 In the event Tengion determines that preparation, filing, prosecution or maintenance of any U.S. such patent applications or foreign Improvement Patent patents, Hoth will own all right, title, and interest in and to such patents, patent applications, and related continuation, continuation-in-part, reissue, divisional, international, foreign, or other related patent applications, inclusive of any patent and all trade secrets, know how, or patent application relating other inventions, whether or not patentable, related thereto and developed pursuant to a Deferred Invention is this Agreement. If Hoth elects not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain a patent application or patent included in the Surrendered Patent Invention Rights that is owned solely by UC or Chelexa, or jointly by Hoth and either or both UC and Chelexa, Chelexa shall be given the opportunity to do so at its own expense. Further, WFUHS Said Invention Right will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free and clear of this Agreement, and in the case of jointly-owned patents, Hoth will retain its joint ownership rights and the Parties will have no duty of royalty or accounting to license or otherwise exploit its rights each other with respect to such Surrendered Patent to any other party on any other termsjointly-owned patents.
10.3 Upon presentation of itemized statements 8.3. Chelexa agrees to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to cooperate fully with Hoth in the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Datepatent applications and patents included within the Invention Rights. Any amounts due hereunder that remain unpaid fortyHoth agrees to promptly reimburse Chelexa for any out-five (45) days after Tengion receives an invoice from WFUHS of-pocket expenses it may incur at Hoth’s request under this Article 8.
8.4. If Hoth chooses to discontinue its prosecution or payment of the continued filing, prosecution or maintenance of any particular patent application or patent within the Patent Rights it will so inform Chelexa in sufficient time prior to implementation of such decision to allow Chelexa to assume such duties. Chelexa then shall bear simple interest accrued at have the annual rate of * from right but not the date obligation to file, prosecute, or maintain such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating at its own expense. In such a case said patent or patent application will be free and clear of this Agreement and Chelexa will be free to exploit and to assign or license or otherwise d is pose of any such patent or patent application to third parties without further obligation to Hoth.
8.5. In the event that any claim of any patent application within the Patent Rights is canceled, abandoned, or otherwise disallowed by a Deferred Inventionfinal non appealable action of a Patent Office having jurisdiction, then WFUHS shall so notify Tengion andor in the event that any claim of any patent within the Patent Rights is held invalid or unenforceable by a non-appealable decision by any court of competent jurisdiction, subject to any rights such claim will be excluded from this Agreement as of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the filing, prosecution and maintenance of such application or patent at Tengion’s expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10final disallowance or final decision of invalidity or non- enforceability .
Appears in 1 contract
Patent Prosecution. 10.1 6.01 The filing and prosecution Parties acknowledge that Licensor has granted a separate license in respect of the U.S. Licensed Technology and foreign the Licensed Patents for use in vaccines to prevent infectious disease in non-humans but as more particularly described in such license dated for reference the 29th day of February, 2000, a copy of which has been provided to Licensee (herein the "Novartis License"). Pursuant to the provisions of Article VI and Article VII of the Novartis License, the licensee thereunder (such license, its successors and assigns herein referred to as "Novartis") has several entitlements, obligations or responsibilities including the following:
(a) to file applications, to prosecute and maintain the Licensed Patents including additions, continuations, divisions and the like thereto;
(a) to discontinue prosecutions and applications and to advise and provide Licensor with the option to proceed with filings, applications and prosecutions;
(a) to regularly apprise Licensor and at Licensor's direction on a confidential basis Licensor's other licensees of the Licensed Patents of the status of patent applications and maintenance of all U.S. approved patents;
(a) to make to Licensor and foreign patents within at Licensor's direction on a confidential basis to other licensees of the WFUHS Licensed Patents who have an interest in an application or registration respecting a Licensed Patent Rights will be managed by WFUHScomplete disclosure other than a disclosure which specifically relates to the license granted under the Novartis License and which does not affect such other licensee's interest in the Licensed Patent(s);
(a) to consult with Licensor and at Licensor's direction on a confidential basis its other licensees of the Licensed Patents respecting any actions or prosecutions affecting Licensed Patents and to insure that any actions of Novartis do not adversely affect such other licensees without the prior written consent of Licensor; provided, however, that, Tengion will have and
(a) to cooperate with Licensor and at Licensor's direction on a confidential basis Licensor's other licensees of the reasonable right to comment upon Licensed Patents in the managementapplication, prosecution and maintenance filing of such patent application(s) any continuations, continuations-inpart, divisions, patents of additions, re-issues, renewals and issued patentsextensions, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations further applications or defense of the JPC. Patent counsel for the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights shall be selected Licensed Patents desired by WFUHS but shall be reasonably acceptable to Tengion (it being agreed Licensor or affecting such other licensees provided that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish same is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property). WFUHS will consult Tengion and will keep Tengion reasonably informed of all matters relating not adverse to the preparation, filing, prosecution and maintenance rights of all WFUHS Patent Rights, including, but not limited to, disclosing Novartis under the Licensed Patents. Novartis is entitled to Tengion the complete text reimbursement by Licensor of all patent applications. In addition, WFUHS will provide Tengion with copies its out of all material correspondence with the applicable patent office pocket expenditures incurred in providing such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights.
10.2 In the event Tengion determines that filing, prosecution or maintenance of any U.S. or foreign Improvement Patent or any patent or patent application relating to a Deferred Invention cooperation which is not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) days before any response or action is needed reimbursed to preserve and Licensor by the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other termsLicensee hereunder.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the filing, prosecution and maintenance of such application or patent at Tengion’s expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10.
Appears in 1 contract
Patent Prosecution. 10.1 6.01 The filing and prosecution Parties acknowledge that Licensor has granted a separate license in respect of the U.S. Licensed Technology and foreign the Licensed Patents for use in vaccines to prevent infectious disease in non-humans but as more particularly described in such license dated for reference the 29th day of February, 2000, a copy of which has been provided to Licensee (herein the “Novartis License”). Pursuant to the provisions of Article VI and Article VII of the Novartis License, the licensee thereunder (such license, its successors and assigns herein referred to as “Novartis”) has several entitlements, obligations or responsibilities including the following:
(a) to file applications, to prosecute and maintain the Licensed Patents including additions, continuations, divisions and the like thereto;
(a) to discontinue prosecutions and applications and to advise and provide Licensor with the option to proceed with filings, applications and prosecutions;
(a) to regularly apprise Licensor and at Licensor’s direction on a confidential basis Licensor’s other licensees of the Licensed Patents of the status of patent applications and maintenance of all U.S. approved patents;
(a) to make to Licensor and foreign patents within at Licensor’s direction on a confidential basis to other licensees of the WFUHS Licensed Patents who have an interest in an application or registration respecting a Licensed Patent Rights will be managed by WFUHScomplete disclosure other than a disclosure which specifically relates to the license granted under the Novartis License and which does not affect such other licensee’s interest in the Licensed Patent(s);
(a) to consult with Licensor and at Licensor’s direction on a confidential basis its other licensees of the Licensed Patents respecting any actions or prosecutions affecting Licensed Patents and to insure that any actions of Novartis do not adversely affect such other licensees without the prior written consent of Licensor; provided, however, that, Tengion will have and
(a) to cooperate with Licensor and at Licensor’s direction on a confidential basis Licensor’s other licensees of the reasonable right to comment upon Licensed Patents in the managementapplication, prosecution and maintenance filing of such patent application(s) any continuations, continuations-inpart, divisions, patents of additions, re-issues, renewals and issued patentsextensions, including the reasonable right to offer comments and advice regarding strategic and tactical decisions in the prosecution and maintenance process; provided further, that WFUHS shall retain the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS Patent Rights. In carrying out these activities, WFUHS will consider in good faith the recommendations further applications or defense of the JPC. Patent counsel for the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights shall be selected Licensed Patents desired by WFUHS but shall be reasonably acceptable to Tengion (it being agreed Licensor or affecting such other licensees provided that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish same is acceptable to Tengion with respect to such firm’s expertise and competence in the substantive law of intellectual property). WFUHS will consult Tengion and will keep Tengion reasonably informed of all matters relating not adverse to the preparation, filing, prosecution and maintenance rights of all WFUHS Patent Rights, including, but not limited to, disclosing Novartis under the Licensed Patents. Novartis is entitled to Tengion the complete text reimbursement by Licensor of all patent applications. In addition, WFUHS will provide Tengion with copies its out of all material correspondence with the applicable patent office pocket expenditures incurred in providing such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights.
10.2 In the event Tengion determines that filing, prosecution or maintenance of any U.S. or foreign Improvement Patent or any patent or patent application relating to a Deferred Invention cooperation which is not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) days before any response or action is needed reimbursed to preserve and Licensor by the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other termsLicensee hereunder.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the filing, prosecution and maintenance of such application or patent at Tengion’s expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10.
Appears in 1 contract
Patent Prosecution. 10.1 The filing and prosecution 18.2.1 In respect of the U.S. Licensed Patents:
(i) UCLB shall not Surrender any of them without the prior written consent of Autolus;
(ii) from the Effective Date and foreign patent applications during the Term for so long as Autolus holds a licence to the same, subject to Clause 18.2.2 Autolus shall at its expense have the exclusive control and conduct of all on-going prosecution and maintenance steps in respect of all U.S. and foreign patents within the WFUHS Licensed Patents but excluding the RQR8 Patent Rights, the CAT19 Patent Rights, the TetCAR Patent Rights will be managed and the [***] Existing Patent (the “Responsible Patents”);
(iii) UCLB shall provide all reasonable or appropriate assistance and cooperation required by WFUHS; provided, however, that, Tengion will have Autolus to enable Autolus to efficiently and effectively discharge the reasonable right to comment upon the management, prosecution and maintenance of such patent application(sthe Responsible Patents and in doing so, UCLB shall follow all directions and instructions of Autolus and do all things reasonably required by Autolus with respect to the Responsible Patents;
(iv) UCLB shall ensure that all documents and correspondence that it, or its agents or other licensees receive in connection with any of the Licensed Patents shall be promptly and in any event within seven (7) days forwarded to Autolus, and without limiting the foregoing, UCLB shall keep Autolus promptly informed in advance of any steps taken regarding the RQR8 Patent Rights, the CAT19 Patent Rights, the TetCAR Patent Rights and the [***] Existing Patent; 92 EXHIBIT 10.1 ***Text Omitted and Filed Separately Confidential Treatment Requested Under 17 C.F.R. §§ 200.80(B)(4) and issued patents230.406
(v) UCLB shall instruct those professional advisors, including the reasonable right to offer comments patent agents and advice regarding strategic and tactical decisions lawyers who act on behalf of UCLB in the prosecution of the Responsible Patents to co-operate with Autolus, accept instructions from Autolus as if they were direct from UCLB and maintenance process; provide all history on the prosecution of the Responsible Patents to Autolus;
(vi) Autolus shall be entitled, at its discretion and cost, to appoint alternative counsel to take over the prosecution of the Responsible Patents;
(vii) UCLB shall promptly notify Autolus of any threatened or actual claim of invalidity or revocation or opposition of any of the Licensed Patents and shall provide full details and all such information available to it regarding such threatened or actual claim. Autolus shall have the right (but not obligation) to control, direct any actions for invalidity, revocation or oppositions issued against the Responsible Patents. UCLB shall do (or not do) all such things as are reasonably directed by Autolus to enable Autolus to control, direct and conduct such proceedings, including allowing Autolus’s legal representatives to conduct such proceedings in UCLB’s name where required or beneficial provided furtherthat Autolus indemnifies UCLB and/or its Affiliates for any Third Party costs, that WFUHS damages, expenses or liability incurred by UCLB and/or its Affiliates as a direct result of UCLB and/or its Affiliates assisting Autolus to conduct such proceedings subject to Clause 18.9. Autolus shall retain pay UCLB for any reasonable (economy) travel and reasonable subsistence costs incurred by UCLB and/or its Affiliates as a result of assisting Autolus under this Clause 18.2.1(vii);
(viii) in respect of the authority to reject any comments proffered by Tengion. Tengion may direct its comments and recommendations directly to WFUHS’s patent counsel so long as WFUHS receives contemporaneous copies of all correspondence, e-mails and other communications with respect thereto. WFUHS will exercise commercially reasonable diligence in applying for, seeking prompt issuance of and maintaining the WFUHS RQR8 Patent Rights, the CAT19 Patent Rights, the TetCAR Patent Rights and the [***] Existing Patent, if the validity of any of them is challenged and UCLB (or its other licensees) does not defend such challenge, then Autolus shall have the right (but not the obligation) to control, direct and conduct such proceedings. In carrying out these activitiesUCLB shall do (or not do) all such things as are reasonably directed by Autolus to enable Autolus to control, WFUHS will consider direct and conduct such proceedings, including allowing Autolus’s legal representatives to conduct such litigation in good faith the recommendations UCLB’s name where required or beneficial provided that Autolus indemnifies UCLB and/or its Affiliates for any Third Party costs, damages, expenses or liability incurred by UCLB and/or its Affiliates as a direct result of assisting Autolus subject to Clause 18.9. Autolus shall pay UCLB’s and/or its Affiliates for any reasonable (economy) travel and reasonable subsistence costs incurred by UCLB and/or its Affiliates as a result of assisting Autolus under this Clause 18.2.1(viii). Autolus shall consult and co-operate with UCLB and its licensees outside of the JPC. RQR8 Field and/or under the CAT19 Patent counsel Rights and the TetCAR Patent Rights if it elects to defend such challenge; EXHIBIT 10.1 ***Text Omitted and Filed Separately Confidential Treatment Requested Under 17 C.F.R. §§ 200.80(B)(4) and 230.406
(ix) UCLB shall provide assistance to and co-operate with Autolus in accordance with this Clause 18 without any further cost to Autolus, save that (i) if UCLB personnel are required to participate in any opposition proceeding (or comparable proceeding before patent offices and courts) which requires full time involvement for more than [***] per annum per Program IP under any Program Licence, then for such excess co-operation beyond the [***] for that Program IP Autolus shall reimburse UCLB its reasonable costs, and (ii) this provision shall be without prejudice to the indemnity given in Clauses 18.2.1(vii) or 18.2.1(viii); and,
(x) any enforcement of the Licensed Patents shall be subject to Clause 19.
18.2.2 In respect of the Responsible Patents, Autolus shall:
(i) subject to UCLB’s compliance with Clause 18.2.1, be responsible for the Patent Prosecution Costs for the Responsible Patents;
(ii) keep UCLB informed of developments in the preparation, filing, prosecution and maintenance of the WFUHS Patent Rights Responsible Patents and shall provide UCLB with copies of all material correspondence to and from its patent attorneys or patent offices in relation to the Responsible Patents and shall provide UCLB reasonable notice of and the opportunity at its own cost to participate in any conference calls or meetings with Autolus’s patent attorneys in relation to the drafting, filing, prosecution and maintenance of the Responsible Patents;
(iii) consult with UCLB in connection with Autolus’s strategy for the prosecution and maintenance of the Responsible Patents;
(iv) take into account any reasonable comments and suggestions of UCLB in relation to the prosecution and maintenance of the Responsible Patents; and
(v) notify UCLB in advance of any steps Autolus proposes be selected taken which would change the specification or reduce the scope of the claims of any Responsible Patent, and having done so shall take into account any reasonable comments and suggestions promptly proposed by WFUHS but shall be reasonably acceptable to Tengion (it being agreed that the firm of ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ & Fish is acceptable to Tengion with respect UCLB in relation to such firm’s expertise steps. 94 EXHIBIT 10.1 ***Text Omitted and competence in Filed Separately Confidential Treatment Requested Under 17 C.F.R. §§ 200.80(B)(4) and 230.406
18.2.3 In respect of the substantive law [***] Existing Patent:
(i) UCLB shall, subject to Clause 7.2, be responsible for all the Patent Prosecution Costs of intellectual property). WFUHS will consult Tengion the prosecution and will maintenance of the same;
(ii) UCLB and Autolus shall collaborate to define the optimal strategy for filing, maintenance and prosecution of the [***] Existing Patent; and
(iii) UCLB shall keep Tengion reasonably Autolus informed of all matters developments relating to the preparation, filing, prosecution and maintenance of all WFUHS Patent Rights, including, but not limited to, disclosing to Tengion the complete text of all patent applications. In addition, WFUHS will provide Tengion with copies of all material correspondence with the applicable patent office in such a manner to allow Tengion a meaningful opportunity to comment. The Parties will cooperate with each other in order to preserve to the greatest extent possible the attorney-client privilege with respect to the prosecution and maintenance of the WFUHS Patent Rights[***] Existing Patents.
10.2 In the event Tengion determines that filing, prosecution or maintenance of any U.S. or foreign Improvement Patent or any patent or patent application relating to a Deferred Invention is not justified (a “Surrendered Patent”), Tengion will notify WFUHS of such determination in writing, thereby surrendering its rights to the Surrendered Patent, such notice to be given no fewer than sixty (60) days before any response or action is needed to preserve and the Surrendered Patent. WFUHS will then have the option to file, prosecute or maintain the Surrendered Patent at its own expense. Further, WFUHS will then have the sole right to delete the Surrendered Patent from the license or option rights of Tengion under this Agreement for the territory covered thereby. WFUHS shall then be free to license or otherwise exploit its rights to such Surrendered Patent to any other party on any other terms.
10.3 Upon presentation of itemized statements to Tengion, Tengion will promptly reimburse WFUHS for all reasonable fees and costs relating to the preparation, filing, prosecuting and maintenance of Improvement Patents that are incurred following the Effective Date. Any amounts due hereunder that remain unpaid forty-five (45) days after Tengion receives an invoice from WFUHS shall bear simple interest accrued at the annual rate of * from the date such payment first became due. * Confidential Treatment Requested 24
10.4 If WFUHS, in its sole discretion, elects not to pursue, maintain or retain a particular Improvement Patent or patent or patent application relating to a Deferred Invention, then WFUHS shall so notify Tengion and, subject to any rights of the U.S. government, if any, under Public Law 96-517, 97-226 and 98-620, codified at 35 U.S.C. §§ 200-212 and any regulations promulgated thereunder, shall authorize Tengion to assume the filing, prosecution and maintenance of such application or patent at Tengion’s expense, but without any additional consideration payable to WFUHS, except reimbursement of the costs of implementing the transfer of such rights and payment of all patent costs through the effective date of the transfer in accordance with Article 10.
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Sources: License Agreement