Disclosure of Invention; Further Actions. 9.2.1 The Research Institute shall, within ten (10) business days of discovery or creation of Research Results, disclose to JST each Research Result by filling the form described in Appendix 6 or Research Institute’s standard invention disclosure form which shall at least provide all the information to be filled in Appendix 6 or equivalent and shall communicate, without cost or delay, and without publishing the same, all available information relating thereto to JST. The Research Institute shall not file any Application pertaining to Research Results without prior written approval of JST. 9.2.2 Following the disclosure of Research Results pursuant to Article 9.2.1, if JST decides to file any Application pertaining to such Research Result, JST shall send a written notice to the Research Institute respectively. The Research Institute respectively shall notify JST in writing within fourteen (14) days upon receipt of the notification from JST above or within thirty (30) days from the disclosure of such Research Result, whichever is later, if it wishes to equally-own the Application and to share equally the expenses for the Application. In case the Research Institute do not so notify JST within that time period, the Research Institute shall be regarded to have waived its right to own any portion of the Application, and JST shall own such portion. 9.2.3 If JST receives notice under Article 9.2.2 to equally-own the Application and share equally the expenses for the Application pursuant to Article 9.1.2 from the Research Institute: (i) The Research Institute shall fully cooperate with JST in the preparation of such Application. If JST decides to file an Application in a country other than [Country which the Research Institute exist], the Research Institute shall fully cooperate with JST to seek a written clearance under the [Country which the Research Institute exist]’s Patent Act, if the Application requires such clearance. (ii) JST shall provide to the Research Institute a copy of any draft of such Application sufficiently prior to filing thereof to permit the Research Institute reasonable opportunity to review and make comments thereon, and the Research Institute shall provide any comments promptly so as not to delay the filing of such Application; (iii) JST shall provide to the Research Institute copies of all substantive communications received from patent offices with respect to such Application, as well as copies of all grants or certificates of registration of any such Application; and (iv) JST shall maintain adequate records showing all out-of-pocket expenses incurred for the preparation, filing, prosecution and maintenance of such Application and Intellectual Property Right issuing therefrom. In the event that JST anticipates the possibility of receiving any single invoice of more than twenty five thousand [Local currency] (e.g/. $25,000) in relation to the preparation, filing, prosecution or maintenance of any such Application and Intellectual Property Right issuing therefrom, JST shall provide the Research Institute with full particulars of such circumstances and the Parties shall discuss in good faith a mutually acceptable course of action prior to incurring such expenditure. The Research Institute shall pay to JST for its share of the expenses within thirty (30) days via wire transfer after receiving an invoice for such expenses from JST. 9.2.4 Upon receipt of the disclosure under Article 9.2.1, if JST elects not to file an Application(s) for such Research Result, JST shall be deemed to have waived its ownership in any Intellectual Property Rights in such Research Result and the Research Institute may take steps to file Application(s) for such Research Result under its own name at its own cost.
Appears in 2 contracts
Samples: Collaborative Research Agreement, Collaborative Research Agreement
Disclosure of Invention; Further Actions. 9.2.1 The Research Institute shall, within ten (10) business days of discovery or creation of Research Results, disclose to JST each Research Result by filling the form described in Appendix 6 or Research Institute’s standard invention disclosure form which shall at least provide all the information to be filled in Appendix 6 or equivalent and shall communicate, without cost or delay, and without publishing the same, all available information relating thereto to JST. The Research Institute shall not file any Application pertaining to Research Results without prior written approval of JST.
9.2.2 Following the disclosure of Research Results pursuant to Article 9.2.19.2.1 hereinabove, if JST decides to file any an Application pertaining to such Research ResultResult (the “First Application”), JST shall send a written notice to the Research Institute respectivelyInstitute. The Research Institute respectively shall notify JST in writing within fourteen (14) days upon receipt of the notification from JST above or within thirty (30) days from the disclosure of such Research Result, whichever is later, if it wishes to equallyjointly-own the First Application and to share equally the expenses for the ApplicationPatent Expenses. In case the Research Institute do not so notify JST within that the aforementioned time period, JST shall own the First Application in its entirety and Research Institute shall be regarded execute any and all documentation necessary to have waived its right to own any portion perfect the ownership of the Application, and JST shall own such portionJST.
9.2.3 If the Research Institute notifies JST receives notice under Article 9.2.2 of its desire to equally-jointly own the First Application and share equally the expenses Patent Expenses for the First Application equally pursuant to Article 9.1.2 9.2.2 hereinabove, within thirty (30) days from such notice, the Research InstituteParties shall discuss in good faith which Party shall have the responsibility and authority to take all reasonable actions necessary and appropriate to seek and maintain patent protection for the First Application (“Lead Party”). A Party which is not Lead Party shall provide cooperation for prosecution of the First Application reasonably requested by the Lead Peaty. If the Parties fail to determine the Lead Party within the thirty-day (“30-day”) period, JST shall be the Lead Party. The Lead Party shall, with respect to the First Application:
(i) The Research Institute shall fully cooperate with JST in the preparation of such Application. If JST decides to file an Application in a country other than [Country which the Research Institute exist], the Research Institute shall fully cooperate with JST to seek a written clearance under the [Country which the Research Institute exist]’s Patent Act, if the Application requires such clearance.
(ii) JST shall provide to the Research Institute other Party a copy of any draft of such Application sufficiently prior to filing thereof to permit the Research Institute other Party reasonable opportunity to review and make comments thereon, and the Research Institute other Party shall provide any comments promptly comments, if any, within ten (10) business days of receipt of the draft so as not to delay the filing of such Applicationfiling;
(iiiii) JST shall provide to the Research Institute other Party copies of all substantive communications received from the patent offices with respect to such Applicationoffice, as well as copies of all grants or certificates of registration registration, and the other Party shall provide comments, if any, within thirty (30) days of its receipt;
(iii) give due consideration to any such Applicationcomments provided by the other Party, although the Lead Party shall have the ultimate decision authority; and
(iv) JST shall maintain adequate records showing all outnot abandon the prosecution (except in favor of a continuation, divisional or continuation-ofin-pocket expenses incurred for part application) or the preparation, filing, prosecution and maintenance of such Application and Intellectual Property Right the patent issuing therefrom. In therefrom without notifying the event that JST anticipates the possibility of receiving any single invoice of more than twenty five thousand [Local currency] (e.g/. $25,000) other Party in relation to the preparation, filing, prosecution or maintenance writing at least 90 days in advance of any such Application applicable deadline and Intellectual Property Right allowing the other Party the opportunity to prosecute or maintain the application or the patent issuing therefrom, JST shall provide the Research Institute with full particulars of such circumstances and the Parties shall discuss in good faith a mutually acceptable course of action prior to incurring such expenditure. The Research Institute shall pay to JST for therefrom at its share of the expenses within thirty (30) days via wire transfer after receiving an invoice for such expenses from JSTsole expense.
9.2.4 If either JST or Research Institute notifies the other Party in writing that it elects not to be responsible for any further Patent Expenses with respect to the First Application, such Party shall not be responsible for the Patent Expenses after expiration of sixty-day (“60-day”) period from the date of the notice, and such Party shall take all necessary actions to transfer all its right, title and interest in and to the First Application (and patent issuing therefrom) to the other Party, and the other Party shall own the First Application (and patent issuing therefrom) in its entirety.
9.2.5 Upon receipt of the disclosure under Article 9.2.19.2.1 hereinabove, if JST elects not to file an Application(s) the First Application for such Research Result, JST shall be deemed to have waived its ownership in any Intellectual Property Rights in such Research Result and the Research Institute may take steps to file Application(s) for such Research Result the First Application under its own name at its own cost.
Appears in 2 contracts
Samples: Collaborative Research Agreement, Collaborative Research Agreement
