PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS Clause Samples

The "Prosecution of Patent Applications and Maintenance of Patents" clause defines the responsibilities and procedures for filing, pursuing, and upholding patent rights related to the subject matter of an agreement. It typically outlines which party is responsible for preparing, submitting, and responding to communications with patent offices, as well as for paying maintenance fees and handling renewals. This clause ensures that valuable intellectual property is properly protected and maintained, clarifying obligations to prevent lapses in patent rights and potential disputes over ownership or enforcement.
PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 4.1 Hormos shall be solely responsible for the prosecution and maintenance of the Patents. Hormos shall be at its discretion entitled to, and is responsible for, all decision making related to the Patents and related to patenting strategy. For the avoidance of doubt, it is hereby acknowledged and agreed that save as for what is expressly provided for herein, Hormos - Orion SERM Licensing agreement -------------------------------------------------------------------------------- Orion shall have no obligation whatsoever concerning the Invention and/or the Patents. 4.2 In the event that Hormos decides not to prosecute the patent applications through issuance of Patents or to discontinue the maintenance of the Patents, such decision to be at the sole discretion of Hormos, Orion shall have the right of first refusal to be assigned such Patents, under a separate assignment agreement to be negotiated by Orion and Hormos.
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PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 10.1 Licensee shall not do anything which might bring into question NUS’ and SHS’ respective ownership of their share of the intellectual property rights in and relating to the Patent Rights or their validity.
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PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 4.1 Subject to ******'s and ******'S rights and obligations with respect to the prosecution of Patent Applications and maintenance of Patents, it is specifically agreed between Orion and Hormos that Orion shall be responsible for the prosecution of the Patent Applications listed on Appendices A and B hereto, and shall be responsible for the maintenance of any and all Triphenylethylenes and Cholesterol Patents in countries set out in Appendices A and B and to apply for appropriate supplementary protection certificates where available.
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PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 10.1 Licensee acknowledges that all intellectual property rights in and relating to the Patent Rights belongs to both NUS and SHS and Licensee shall not do anything which might bring into question NUS’ and SHS’ respective ownership of the intellectual property rights in and relating to the Patent Rights or their validity.
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PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 4.2.1 Penn agrees to provide promptly to Apollon a complete written disclosure of any invention reasonably considered patentable. Apollon agrees to advise Penn, no later than 30 days after receipt of such disclosure, whether it requests Penn to file and prosecute a patent application related to such invention. If Apollon does not request Penn to file and prosecute a patent, Penn may proceed with such preparation and prosecution at its own cost and expense. 4.2.2 Penn shall be responsible for and shall control the preparation, filing, and prosecution of all patent applications and the maintenance of all patents related to Penn Intellectual Property. Apollon shall have full rights of consultation in this process. Penn and Apollon shall be mutually responsible for and shall control the preparation, filing, and prosecution of all patent applications and the maintenance of all patents related to Joint Intellectual Property. Penn and Apollon shall consult with each other fully in this process. Apollon agrees to reimburse Penn for all documented expenses (including legal fees, filing and maintenance fees or other governmental charges) incurred in connection with the filing and prosecution of the patent applications and maintenance of the patents that Apollon has requested Penn to prosecute under this Section 4.2. Such reimbursement will be fully creditable against future royalties due Penn under any future license agreement for such patent. 4.2.3 Apollon and Penn shall mutually determine the countries where the patent applications will be filed and prosecuted, and where the patents will be maintained. If Apollon declines to reimburse Penn for the filing, prosecution and maintenance costs in any jurisdiction, Penn may pay such costs, but such patents shall be excluded from Apollon's option under Article 5 hereof. 4.2.4 Each party agrees to cooperate with the other party to execute all lawful papers and instruments and to make all rightful oaths and declarations as may be necessary in the preparation and prosecution of all patents applications and other application referred to in this Article 4.
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PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 9.1 Licensee shall [***]. 9.2 Licensors shall, from the Effective Date of this Agreement, control the management and further prosecution and maintenance of the Patent Rights and the Other Patent Rights (collectively, the “Prosecuted Patent Rights”). Subject to Section 9.4 below, Licensors shall: (a) seek and maintain the strongest patent portfolio practicable with respect to the Prosecuted Patent Rights and use patent attorneys (including foreign patent counsel) reasonably acceptable to Licensee, such acceptance not to be unreasonably withheld; (b) instruct such patent attorneys to [***] copy Licensee on all written correspondence sent to or received from any patent office (including all official actions) and give Licensee an opportunity and [***] to (i) comment on and advise Licensors with respect to all such correspondence and proposed responses to office actions, and (ii) provide consultation and input on all strategic decisions with respect to the preparation, filing, prosecution and maintenance of all patent applications and patents within the Prosecuted Patent Rights; and (c) consider in good faith and reasonably incorporate all such comments, input and advice provided by Licensee and, without limiting the foregoing, Licensors shall file patent applications included the Prosecuted Patent Rights in each country requested by Licensee; (d) not abandon or allow to lapse any such Prosecuted Patent Rights, or to amend or re-file the patent specifications of any patent applications within the scope of the Prosecuted Patent Rights, without first providing [***] prior written notice to Licensee. 9.3 Licensee shall, [***], execute and do such assurances, acts and things, and execute such documents as Licensors may reasonably require to prosecute patent applications within the Prosecuted Patent Rights and to grant and to maintain each of the Prosecuted Patent Rights in force. In addition, upon any Patty’s request, NUS, St Jude and Licensee shall enter into a “commonality of interest” agreement to maintain attorney-client privilege and confidentiality with respect to the parties’ communications hereunder pertaining to the filing and/or prosecution of any of the Prosecuted Patent Rights. 9.4 It is hereby agreed and understood that, notwithstanding Section 9.2, Licensee shall, by giving [***] to Licensors, [***]. If Licensee elects [***]: (a) the license and/or rights granted pursuant to this Agreement in respect of the specific Prosecuted Patent Rights for which ...
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PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 5.1.1 PENN agrees to provide promptly to SPONSOR a complete written disclosure of any PENN INTELLECTUAL PROPERTY reasonably considered
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PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS. 5.1.1 PENN agrees to provide promptly to SPONSOR a complete written disclosure of any PENN INTELLECTUAL PROPERTY reasonably considered patentable. SPONSOR agrees to advise PENN, no later than thirty (30) days after receipt of such disclosure, whether it requests PENN to file and prosecute a United States patent application related to such PENN INTELLECTUAL PROPERTY. If SPONSOR does not request PENN to file and prosecute a patent application, PENN may proceed with such preparation and prosecution at its own cost and expense; but such patent applications shall be excluded from SPONSOR's right under the License Agreement. 5.1.2 The mutual rights and obligations of the parties with respect to filing, maintenance and prosecution of patents and patent applications respecting PENN's INTELLECTUAL PROPERTY shall be as set forth in the LICENSE AGREEMENT.
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Related to PROSECUTION OF PATENT APPLICATIONS AND MAINTENANCE OF PATENTS

  • Prosecution and Maintenance of Patent Rights (a) Subject to commercially appropriate and reasonable efforts (subject to oversight by the Advisory Committee), Genetronics shall at its own expense and by counsel of its own choice, file, prosecute and maintain all patent applications and patents within the Genetronics Patent Rights and any inventions conceived of and reduced to practice solely by its employees and agents hereunder. Genetronics shall do everything commercially appropriate and reasonable (subject to oversight by the Advisory Committee), including without limitation filing all documents and paying all fees to the appropriate patent offices to maintain the patents and pending patent applications in effect. Genetronics agrees to promptly provide Ethicon with copies of all correspondence to and from the patent offices related to the pending patent applications within the Genetronics Patent Rights. Ethicon shall have the right to provide comments to Genetronics regarding the content of such correspondence, and to comment thereon. Genetronics shall consider all such comments offered by Ethicon; provided, that all final decisions with respect to such prosecution shall rest solely in the discretion of Genetronics. In the event that Genetronics desires to abandon any such patent application or patent within the Genetronics Patent Rights, or if Genetronics later declines to prosecute or maintain any such patent application or patent, Genetronics shall provide reasonable prior written notice to Ethicon of such intention and Ethicon shall have the right, but not the obligation at its own expense, to file, prosecute, and maintain such patent application or patent, which Genetronics shall assign to Ethicon and shall no longer be subject to the terms of this Agreement. (b) The Advisory Committee shall determine which party shall be responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights on a case by case basis, with the understanding that it is the parties' intent that Genetronics shall be initially responsible for the filing, prosecution and maintenance of patent applications and patents within the Joint Patent Rights related to the Drug Delivery System. In the event that a party responsible for the filing, prosecution and maintenance of any patent application or patent within the Joint Patent Rights desires to abandon such patent application or patent, or if such party later declines responsibility for such patent application or patent, such party shall provide reasonable prior written notice to the other party of its intention to abandon or decline responsibility, and the other party shall have the right, but not the obligation, to prepare, file, prosecute, and maintain any such patent application or patent within the Joint

  • Prosecution and Maintenance of Patents (a) Arbutus shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for Arbutus Patents, post-grant review and similar proceedings. Arbutus shall notify Gritstone of all material developments and all significant actions to be taken in connection with prosecuting and maintaining the Arbutus Patents that Cover any Product and provide Gritstone with copies of all material filings or responses to be made to the patent authorities with respect to such Arbutus Patents and all other material submissions and correspondence with any patent authorities regarding such Arbutus Patents in sufficient time to allow for review and comment by Gritstone. Gritstone shall offer its comments or proposals, if any, promptly, and Arbutus shall not unreasonably reject any such comments and proposals. (b) Gritstone shall have the sole right and responsibility, in its sole discretion and at its sole cost and expense, to file, prosecute, maintain or abandon patent protection in the Territory for any Patent that is part of the Gritstone IP, or Product IP, including patent term extensions and defending opposition, re-examination, post-grant review and similar proceedings. (c) Subject to Section 6.2(d), [***], by counsel it selects to whom [***] has no reasonable objection, in consultation with [***], shall be responsible for the preparation, filing, prosecution and maintenance of the Patents Covering Joint IP in the countries selected by [***] in consultation with [***]. [***] shall provide [***] with access to all substantive documentation, filings and communications to or from the respective patent offices in the Territory with respect to the Joint Patents at reasonable times and on reasonable notice of at least [***] Business Days. [***] shall confer with and keep [***] reasonably informed regarding the status of such activities. (d) In the event that [***] desires to abandon, withdraw or otherwise discontinue the maintenance or prosecution of the Joint Patents in the Territory, [***] shall provide reasonable prior written notice to [***] of such intention (which notice shall, in any event, be given no later than [***] days prior to the next deadline for any action that may be taken with respect to such Patents with the applicable patent office) and [***] shall have the right, but not the obligation, to assume, at its expense, responsibility for the prosecution and maintenance thereof. (e) Except as provided in Section 6.2(d), all out-of-pocket costs and expenses incurred in the preparation, filing, prosecution and maintenance of any Patent that Covers Joint IP in the Territory shall be shared equally by the Parties. (f) Notwithstanding the foregoing, (i) Arbutus shall not file a patent application that includes any Gritstone IP or Gritstone Sole IP and (ii) Gritstone shall not file a patent application that includes any Arbutus Background IP, Arbutus Improvement IP or Arbutus Sole IP, in each case without the other Party’s prior written consent.

  • Maintenance of Patents At its own expense, each Grantor shall make timely payment of all post-issuance fees required pursuant to 35 U.S.C. § 41 to maintain in force rights under each Patent.

  • Prosecution of Patents (a) The Licensor shall be solely responsible for preparing, prosecuting and maintaining the BENTLEY Patents. (b) Each Party shall cooperate with the other Party to execute all required papers and instruments and to make all required oaths and declarations as may be necessary in the preparation and prosecution of all such patents and other applications and protections referred to in this Section 9.1.

  • Patent Prosecution and Maintenance 14.1 REGENTS will diligently prosecute and maintain the United States and foreign patent applications and patents under REGENTS' PATENT RIGHTS, subject to LICENSEE’S reimbursement REGENTS’ out of pocket costs under Paragraph 14.3 below, and all patent applications and patents under REGENTS’ PATENT RIGHTS will be held in the name of REGENTS. REGENTS will have sole responsibility for retaining and instructing patent counsel, but continued use of such counsel at any point in the patent prosecution process subsequent to initial filing of a U.S. patent application covering the INVENTION shall be subject to the approval of LICENSEE. If LICENSEE rejects three of REGENTS’ choice of prosecution counsel, then REGENTS may select new prosecution counsel without LICENSEE’s consent. REGENTS shall promptly provide LICENSEE with copies of all relevant documentation so that LICENSEE may be currently informed and apprised of the continuing prosecution and LICENSEE agrees to keep this documentation confidential in accordance with Article 26. LICENSEE may comment upon such documentation, provided, however, that if LICENSEE has not commented upon such documentation in reasonable time for REGENTS to sufficiently consider LICENSEE’s comments prior to the deadline for filing a response with the relevant government patent office, REGENTS will be free to respond appropriately without consideration of LICENSEE's comments. LICENSEE and LICENSEE's patent counsel will have the right to consult with patent counsel chosen by REGENTS. 14.2 REGENTS will use reasonable efforts to prepare or amend any patent application to include claims reasonably requested by LICENSEE to protect the LICENSED PRODUCTS contemplated to be SOLD or to be practiced under this AGREEMENT. 14.3 Subject to Paragraphs 14.4 all past, present, and future costs for preparing, filing, prosecuting, and maintaining all United States and foreign patent applications, and patents under REGENTS’ PATENT RIGHTS will be borne by LICENSEE, so long as the licenses granted to LICENSEE herein are exclusive. Payments are due within thirty (30) days after receipt of invoice from REGENTS. If, however, REGENTS reduces the exclusive licenses granted herein to non-exclusive licenses pursuant to Paragraphs 7.3, 7.4, or 7.5 and REGENTS grants additional license(s), the costs of preparing, filing, prosecuting and maintaining such patent applications and patents will be divided equally among the licensed parties from the effective date of each subsequently granted license AGREEMENT. 14.4 LICENSEE's obligation to underwrite and to pay all domestic and foreign patent filing, prosecution, and maintenance costs will continue for so long as this AGREEMENT remains in effect, provided, however, that LICENSEE may terminate its obligations with respect to any given patent application or patent in any or all designated countries upon three (3) months’ written notice to REGENTS. REGENTS will use its best efforts to curtail patent costs when such a notice is received from LICENSEE. REGENTS may continue prosecution and/or maintenance of such applications or patents at its sole discretion and expense; provided, however, that LICENSEE will have no further right or licenses thereunder.