Common use of Prosecution of Joint Patents Clause in Contracts

Prosecution of Joint Patents. (a) Akebia will have the first right of election to file patent applications for Joint Inventions. If Akebia declines to file such applications then Licensee may do so. On a semi-annual basis, Akebia shall provide to Licensee a written summary of the status of all Akebia Patents, including patent applications within Akebia Patents in the Territory. On the reasonable request of Akebia, Licensee shall cooperate with Akebia in connection with the prosecution of all patent applications included within Joint Patents. (b) Licensee undertakes without cost to Akebia to obtain all necessary assignment documents for Akebia, to render all signatures that shall be necessary for such patent filings and to assist Akebia in all other reasonable ways that are necessary for the issuance of the patents involved as well as for the maintenance and prosecution of such patents. Akebia shall be responsible for [***] of the costs incurred with respect to the prosecution and maintenance of such Joint Patents. (c) Should Akebia decide that it is no longer interested in maintaining or prosecuting a particular Joint Patent in the Territory during the Term, it shall promptly advise Licensee of this decision. Licensee may, upon written notice to Akebia, assume such prosecution and maintenance at its sole expense Akebia shall assign such Joint Patent to Licensee at no cost to Licensee. Following such assignment, such patent or patent application shall no longer be considered a Joint Patent and shall be considered a Licensee Patent.

Appears in 1 contract

Sources: Collaboration Agreement (Akebia Therapeutics, Inc.)

Prosecution of Joint Patents. (a) Akebia will have the first right of election to file patent applications for Joint Inventions. If Akebia declines to file such applications then Licensee may do so. On a semi-annual basis, Akebia shall provide to Licensee a written summary of the status of all Akebia Patents, including patent applications within Akebia Patents in the Territory. On the reasonable request of Akebia▇▇▇▇▇▇, Licensee shall cooperate with Akebia in connection with the prosecution of all patent applications included within Joint Patents. (b) Licensee undertakes without cost to Akebia to obtain all necessary assignment documents for Akebia▇▇▇▇▇▇, to render all signatures that shall be necessary for such patent filings and to assist Akebia ▇▇▇▇▇▇ in all other reasonable ways that are necessary for the issuance of the patents involved as well as for the maintenance and prosecution of such patents. Akebia shall be responsible for [***] of the costs incurred with respect to the prosecution and maintenance of such Joint Patents. (c) Should Akebia ▇▇▇▇▇▇ decide that it is no longer interested in maintaining or prosecuting a particular Joint Patent in the Territory during the Term, it shall promptly advise Licensee of this decision. Licensee may, upon written notice to Akebia, assume such prosecution and maintenance at its sole expense Akebia shall assign such Joint Patent to Licensee at no cost to Licensee. Following such assignment, such patent or patent application shall no longer be considered a Joint Patent and shall be considered a Licensee Patent.

Appears in 1 contract

Sources: Collaboration Agreement (Akebia Therapeutics, Inc.)