Patents and Infringement Clause Samples

Patents and Infringement. VIII. Confidentiality....................................................................

Patents and Infringement. 8.1 Subsequent to the EFFECTIVE DATE, LICENSORS shall continue to have responsibility, at their shared expense, for filing, prosecuting and maintaining their jointly owned patent applications in the USPTO on TECHNOLOGY; DUKE shall continue to have responsibility, at its own expense, for filing, prosecuting and maintaining its solely owned patent applications in the USPTO on DUKE TECHNOLOGY; and MVP shall continue to have responsibility, at its own expense, for filing, prosecuting and maintaining its solely owned patent applications in the USPTO on MVP TECHNOLOGY. LICENSORS shall keep LICENSEE advised as to the prosecution of such applications by forwarding to LICENSEE copies of all official correspondence relating thereto, and shall give LICENSEE an opportunity to comment on all applications, responses to Office Actions, Declarations and other papers before they are filed with the USPTO, and shall consult with LICENSEE concerning the scope of allowed claims before paying any issue fee. 8.2 LICENSEE agrees to cooperate with the LICENSORS in the prosecution of the U.S. patent applications to ensure that the applications reflect, to the best of LICENSEE’s knowledge, all items of commercial and technical interest and importance. 8.3 LICENSORS shall seek patent protection in Europe (including the United Kingdom), Japan and such other countries as LICENSEE may designate, and LICENSEE shall reimburse LICENSORS within thirty (30) days for their reasonable, out-of-pocket costs associated with obtaining such protection; provided, however, that the prosecution of such applications shall be at the direction of LICENSEE and LICENSEE may elect to prosecute such applications itself or have them prosecuted through LICENSEE’s agents. (a) Regardless of whether LICENSORS or LICENSEE prosecute(s) such application, the resultant patents shall be owned by LICENSORS. (b) LICENSORS may elect to seek patent protection in countries not designated by LICENSEE, in which case LICENSORS shall be responsible for all expenses attendant thereto. (c) In the event that LICENSEE elects to prosecute foreign patent applications itself, LICENSORS will be kept informed, will have an opportunity to comment, and shall have the right to approve such applications, which approval will not be unreasonably withheld. (d) If LICENSEE decides to abandon or not pursue any application, LICENSEE shall notify LICENSORS in a timely manner so that LICENSORS can decide whether or not to assume the prosecution. 8...

Patents and Infringement. 6.1 RESPONSIBILITY FOR JOINT PATENT RIGHTS. Company shall have primary responsibility, at Company's expense, for the preparation, filing, prosecution, and maintenance of all Joint Patent Rights (except as otherwise agreed in writing by University and by UC), using patent counsel selected by Company. Company shall consult with University as to the preparation, filing, prosecution, and maintenance of all such Joint Patent Rights reasonably prior to any deadline or action with the U.S. Patent & Trademark Office or any foreign patent office (a "Patent Office") and shall furnish University with copies of all relevant documents reasonably in advance of such consultation. Responsibility for any patent rights covered by the UMMC Cases shall be determined in accordance with Section 6.2 below.

Patents and Infringement. (1) If any infringement comes to the attention of CIMYM it shall promptly notify CIMAB in writing. If any infringement comes to the attention of CIMAB, CIMAB shall promptly notify CIMYM in writing. CIMYM shall take such steps as it may consider advisable against that infringement for the protection of CIMAB, CIM, or CIMYM's rights in the Territory. CIMYM shall have exclusive carriage and control of any action for infringement, and may settle any such action without the consent of CIMAB or CIM. CIMYM shall assume the cost of any such action in the Territory. CIMYM may delegate the carriage and control of any such action to an Affiliated Company or to a sub-licensee. (2) If any actual or potential claim against CIMAB, CIM or CIMYM relating to the Product comes to the attention of CIMYM, CIMYM shall promptly notify CIMAB in writing. If any actual or potential claim against CIMAB, CIM, CIMYM relating to the Product comes to the attention of CIMAB, CIMAB shall promptly notify CIMYM in writing. CIMYM shall have exclusive carriage and control of any action brought against YM. CIM, CIMYM or CIMAB. arising out of CIMYM's use of the Technology, or arising out of the Manufacturing, Finishing or Marketing, or any sale or offer of sale of the Product in any country in the Territory, and may settle any such action without the consent of CIMAB or CIM. CIMYM may delegate the carriage and control of ~: any such action to an Affiliated Company or to a sub-licensee. (3) CIMYM shall assume the expense for the filing, prosecution and maintenance of all Patents in all countries in the Territory. CIMYM shall consult with CIMAB in making any significant decisions in the filing, prosecution and maintenance of the Patents.

Patents and Infringement. 6.1 Pursuant to this Licensing Agreement, Licensor grants Licensee the right to further develop the licensed patents and trademarks as set forth in Schedule A. 6.2 At all times, unless modified by all of the parties hereto, Licensor agrees to pay all costs incident to the patents for the Subject Technology and like protection in all jurisdictions where the patents are filed, including all costs incurred for filing, prosecution, issuance and maintenance fees, as well as any costs incurred in filling continuations, continuations-in-part, divisions or related applications, and any re-examination or reissue proceedings. Licensor agrees to keep Licensee fully informed, at Licensors' expense, of prosecutions and maintenance pursuant to paragraph 6.2, including submitting to Licensee copies of all official actions and responses thereto; provided that, however, Licensee shall be responsible for any of its expenses including attorney's fees that Licensee incurs in reviewing and commenting on the information it received from the Licensors. Licensors shall consult Licensee regarding any abandonment of the prosecution or maintenance of the patents for the Subject Technology and shall abstain from abandoning any prosecution or maintenance of such patents without Licensee’s written consent. 6.3 In the event that Licensee decides to prosecute a patent application for any new technology developed from the Subject Technology in any jurisdiction, Licensee shall timely notify Licensor the status of such applications. If Licensee fails to notify Licensor in sufficient time, such failure shall not be considered a default event of this Licensing Agreement. Licensor agrees to reasonably cooperate with Licensee to whatever extent is reasonably necessary to procure patent protection and prosecution of any technology newly developed from the Subject Technology. 6.4 Each Party shall promptly inform the other of any suspected infringement of any claims with respect to the patents for Subject Technology, as well as the misuse, misappropriation, theft, or breach of confidence of other proprietary rights in the Subject Technology by a third party. With respect to such activities as are suspected, Licensee shall have the right, but not the obligation, to institute an action for infringement, misuse, misappropriation, theft, or breach of confidence of the proprietary rights against such third party. If Licensee fails to bring such an action or proceeding within a period of one (1) month a...

Patents and Infringement. 6.1 Included within the Research Contract will be the details of the costs and expenses related to the filing, prosecution and maintenance of United Slates and foreign patent applications with respect to the Licensed Technology and such responsibility to pay for these costs will not be transferred to MedQuest hereunder. MedQuest reserves the right to complete such protection mechanisms for the Licensed Technology as it may determine to be appropriate to protect the intellectual property rights of the Licensed Technology. 6.2 If it is believed in good faith that the Patent Rights or other intellectual property rights relating to the Licensed Technology are being infringed by a third party, the party to this Agreement first having knowledge of such infringement shall promptly notify the other in writing, which notice shall set forth the facts of such infringement in reasonable detail. Licensee shall have the right, but not the obligation, to institute and prosecute at its own expense any such infringement of the Patent Rights or other intellectual property tights. If Licensee fails to bring such action or proceedings within a period of three (3) months, after receiving written notice or otherwise having knowledge of such infringement, then MedQuest shall have the right, but not the obligation, to institute and prosecute at its own expense any such infringement of the Patent Rights or other intellectual property rights. Recovery of damages and costs in such suit shall be apportioned as follows: The party bringing the suit shall first recover an amount equal to two (2) times the cost and expense incurred by such party directly related to the prosecution of such action and the remainder shall be divided equally between MedQuest and Licensee.

Patents and Infringement. 34 8.1. Disclosure and Ownership of Program Technology and Program Patent Rights 34

Patents and Infringement. 8.1 Prosecution and Maintenance of Primary Lpath Patent Rights. From the Execution Date, Pfizer shall have the sole right to control the prosecution and maintenance of all Primary Lpath Patent Rights (including without limitation the ***, using patent counsel reasonably acceptable to Lpath. Pfizer shall keep Lpath reasonably informed of the course of the prosecution and maintenance of Primary Lpath Patent Rights and (ii) reasonably consider ▇▇▇▇▇’s comments regarding such matters, and (iii) reasonably endeavor to undertake all suggestions by Lpath that are not unreasonable. Until expiration of Pfizer’s Expansion Rights, Lpath shall keep Pfizer reasonably informed of the course of the prosecution and maintenance of patents and patent applications Controlled by Lpath as of the Execution Date or at any time during the Term relating to any Licensed Product outside the Field and Lpath shall reasonably consider Pfizer’s comments. In the event that Pfizer does not obtain a license for Licensed Products outside the Field through the Expansion Rights, Lpath shall thereafter keep *** Portions of this page have been omitted pursuant to a request for Confidential Treatment filed separately with the Commission. 31 Pfizer reasonably informed with respect to such patents and patent applications other than those having applicability solely outside the Field. 8.2 Patent Filing, Prosecution and Maintenance Costs of the Primary Lpath Patent Rights. (a) Pfizer shall be responsible for and shall pay *** patent expenses incurred after the Execution Date for prosecution and maintenance of the Primary Lpath Patent Rights in the Field; provided, however, that if at any time Lpath grants a Commercial License outside the Field under any Primary Lpath Patent Right that is applicable both inside and outside the Field to any Third Party (an “Out-of-Field Licensee”) or Lpath itself Launches a Licensed Product outside the Field (“Lpath Launch”), Pfizer shall thereafter be responsible for ***% of the expenses incurred after the effective date of such Commercial License or Lpath Launch for prosecution and maintenance of such Primary Lpath Patent Right. As used herein, “Commercial License” means a license to make and sell commercial quantities of Licensed Products outside the Field, or an exclusive right to market and distribute Licensed Products outside the Field in one or more given countries; provided, however, that a license to manufacture Licensed Products for supply to Lpath or a lice...

Patents and Infringement. 5.1 GENOMETRIX agrees to pay all costs incident to the filing, prosecuting and maintaining of the Subject Technology in the United States and elected foreign countries, and any and all costs incurred in filing continuations, continuations-in-part, divisionals or related applications thereon and any re-examination or reissue proceedings thereof. 5.2 In the event that GENOMETRIX decides not to: (i) continue prosecution of the Subject Technology to issuance or (ii) maintain any United States or foreign issued patent on the Subject Technology, GENOMETRIX shall timely notify BAYLOR in writing thereof in order that BAYLOR may continue: (i) said prosecution of such patent applications or (ii) said maintenance of issued patents at its own expense. GENOMETRIX's right under this Agreement to make, have made, use, market, sell or offer to sell the Subject Technology under this patent shall immediately terminate upon the giving of such notice. If GENOMETRIX fails to notify BAYLOR in sufficient time for BAYLOR to assume said costs, GENOMETRIX shall be considered in default of this Agreement. 5.3 BAYLOR agrees to keep GENOMETRIX fully informed, at GENOMETRIX's expense, of all prosecutions and other actions pursuant to this Section 5, except for