Common use of Prosecution by Caltech Clause in Contracts

Prosecution by Caltech. Caltech shall use reasonable efforts, consistent with its normal practices, to: (a) prepare, file and prosecute any and all patent application(s) in connection with the Exclusively Licensed Patent Rights; and (b) prepare, file and prosecute any and all patent application(s) in connection with the Improvement Patent Rights licensed hereunder for which Caltech or Licensee deems it beneficial to obtain additional coverage. Licensee may recommend patent counsel for this purpose. At Licensee’s request, Caltech shall request that its patent counsel waive any conflict of interest so that such patent counsel may prepare, prosecute and file patent applications for the Licensee in addition to those covered by this Agreement. Such request for conflict waiver can be reasonably withheld by Caltech if in its sole discretion, an actual conflict exists. Caltech shall provide the Licensee with copies of all relevant documents from and correspondence with the U.S. Patent and Trademark Office and corresponding foreign jurisdictions so that Licensee will be informed of the continuing prosecution and other administrative proceedings involving the Exclusively Licensed Patent Rights and the Improvement Patent Rights. Licensee may comment upon such documents and correspondence sufficiently in advance of the filing deadline for a response, and Caltech shall reasonably consider Licensee’s comments in preparing such response. Caltech shall permit Licensee to review all patent applications and claims made therein, and Caltech shall make reasonable efforts to implement modifications thereto as may be requested by Licensee prior to filing and during prosecution. Caltech shall consult with Licensee in a timely manner before electing countries for national stage prosecution. Licensee shall be responsible for costs only for those foreign jurisdictions in which it has elected to proceed with prosecution. With respect to filings pursuant to clause (b) of this Section 4.1, Caltech shall promptly disclose Improvements to Licensee and Licensee shall elect within thirty (30) days whether such Improvements shall be included within the Improvement Patent Rights, at its expense. Caltech will have no obligation to prosecute patent applications that may constitute Improvements that are not elected by licensee. Upon written election by Licensee, Exhibit A shall be automatically amended and deemed to include, without any further action by the Parties, inventions within the Exclusively Licensed Patent Rights or Improvement Patent rights, as applicable.

Prosecution by Caltech. Caltech shall use reasonable efforts, consistent with its normal practices, to: (a) prepare, file and prosecute any and all patent application(s) in connection with the Exclusively Licensed Patent Rights; and (b) prepare, file and prosecute any and all patent application(s) in connection with the Improvement Patent Rights licensed hereunder for which Caltech or Licensee deems it beneficial to obtain additional coverage. Licensee may recommend patent counsel for this purpose. At Licensee’s request, Caltech shall request that its allow Licensee’s patent counsel waive to: (a) prepare, file and prosecute any and all patent application(s) in connection with the Exclusively Licensed Patent Rights; and (b) prepare, file and prosecute any and all patent application(s) in connection with the Improvement Patent Rights licensed hereunder for which Caltech or Licensee deems it beneficial to obtain additional coverage. Further, Caltech shall agree to execute a conflict of interest waiver so that such patent counsel may prepare, prosecute and file patent applications for the Licensee in addition to those covered by this Agreement. Such request for conflict waiver can be reasonably withheld by Caltech if in its sole discretionif’, an actual conflict exists. Depending on whether Caltech or the Licensee is prosecuting the Exclusively Licensed Patent Rights and/or the Improvement Patent Rights, the party prosecuting the Exclusively Licensed Patent Rights and/or the Improvement Patent Rights (“Prosecuting Party”) shall provide the Licensee other with copies of all relevant documents from and correspondence with the U.S. Patent and Trademark Office and corresponding foreign jurisdictions so that Licensee each party will be informed of the continuing prosecution and other administrative proceedings involving the Exclusively Licensed Patent Rights and the Improvement Patent Rights. Licensee Each party may comment upon such documents and correspondence sufficiently in advance of the filing deadline for a response, and Caltech each party shall reasonably consider Licensee’s the comments of the other party in preparing such response. Caltech Each party shall permit Licensee the other to review all patent applications and claims made therein, and Caltech Prosecuting Party shall make reasonable efforts to implement modifications thereto as may be requested by Licensee the other party prior to filing and during prosecution. Caltech The Prosecuting Party shall consult with Licensee the other party in a timely manner before electing countries for national stage prosecution. Licensee shall be responsible for costs only for those foreign jurisdictions in which it has elected to proceed with prosecution. With respect to filings pursuant to clause (b) of this Section 4.1, Caltech shall promptly disclose Improvements to Licensee and Licensee shall elect within thirty (30) days whether such Improvements shall be included within the Improvement Patent Rights, at its expense. Caltech will have no obligation to prosecute patent applications that may constitute Improvements that are not elected by licenseeLicensee. Upon written election by Licensee, Exhibit A shall be automatically amended and deemed to include, without any further action by the Parties, inventions within the Exclusively Licensed Patent Rights or Improvement Patent rights, as applicable.”