Abandonment of Patent Rights by Lead Institution. The Lead Institution will not abandon the prosecution of any patent application (except in favor of a continuation, divisional or continuation-in-part application) or the maintenance of any Patent Rights without notifying the Other Institution(s) in writing at least 90 days in advance of any applicable deadline and allowing the Other Institution(s) the opportunity to prosecute or maintain such Patent Rights at its sole expense in the name of Other Institution(s) and Lead Institution. If the Other Institution(s) wishes to continue prosecution of such Patent Rights, then the Parties will negotiate in good faith an appropriate arrangement to enable the Other Institution(s) to continue prosecution and commercialization of such Patent Rights, which may include the Parties entering into a new agreement that gives an Other Institution the lead in patent prosecution and licensing with appropriate adjustments in the economic arrangements between the Parties.
Abandonment of Patent Rights by Lead Institution. The Lead Institution will not abandon the prosecution of any patent application (except in favor of a continuation, divisional or continuation-in-part application) or the maintenance of any Patent Rights without notifying the Other Institution(s) in writing at least 90 days in advance of any applicable deadline and allowing the Other Institution(s) the opportunity to prosecute or maintain such Patent Rights at its sole expense in the name of Other Institution(s) and Lead Institution. If the Other Institution(s) wishes to continue prosecution of such Patent Rights, then the Parties will negotiate in good faith an appropriate arrangement to enable the Other Institution(s) to continue prosecution and commercialization of such Patent Rights, which may include the Parties entering into a new agreement that gives an Other Institution the lead in patent prosecution and licensing with appropriate adjustments in the economic arrangements between the Parties.10 10 Given the complexity of structuring a mechanism for changing Lead Institutions and the relative infrequency of a Lead Institution withdrawing from paying patent costs and the other parties wishing to continue, the Model IIA addresses the circumstances of a Lead Institution pulling out by requiring the parties to negotiate in good faith a resolution which enables the other institutions to continue prosecution and commercialization of such Patent Rights if they desire to do so. If the parties wish to structure the IIA to permit a change of Lead Institutions, Section 2.4 would need to be edited as appropriate and a specific provision addressing the change would need to be added. The following is a sample provision, which may be added as a new section at the end of the agreement: “Change in Lead Institution. An Other Institution may elect to become the Lead Institution by providing written notice to the Lead Institution if either: (a) the Lead Institution has elected to withdraw from paying its Share of Patent Expenses for all or a substantial portion of the Patent Rights in accordance with Section 2.4 and such Other Institution has elected to pay Patent Expenses to maintain such Patent Rights, or (b) the current Lead Institution has been the Lead Institution for more than three years and the Agreement is terminable in accordance with Section 9.2 because no License Agreement is currently in place and the Lead Institution is not actively engaged in a License Agreement negotiation. Such election will become effe...
