Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense. (b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL. (c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance. (d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTL.
Appears in 3 contracts
Samples: License Agreement (XTL Biopharmaceuticals LTD), License Agreement (Cubist Pharmaceuticals Inc), License Agreement (XTL Biopharmaceuticals LTD)
Filing, Prosecution and Maintenance of Patents. 5.2.1 Except as provided in this Section 5.2 or Section 5.5, each Party shall have the sole right, at its own expense, to control the filing, prosecution, maintenance, defense and enforcement of its own patents and patent applications.
5.2.2 Diversa shall confer with IBP regarding its plans to secure patent protection for any Program Inventions owned by Diversa which cover the composition, manufacture or use of Compounds, Compound Derivatives, Active Substructures and/or Products (“Compound Patents”). The Parties shall seek to agree on the patent strategy to be followed in securing such protection.
(a) CUBIST Diversa shall select outside counsel to prepare, prosecute, and maintain each patent application and resulting patent within the Compound Patents, and IBP shall reimburse Diversa for [ * ] incurred in connection with such work. The Parties shall have equal access to such outside counsel. The Parties shall seek to agree on the prosecution of patent applications within the Compound Patents, but in the event of disagreement, Diversa shall control the prosecution. If IBP is dissatisfied with the prosecution of patent applications within the Compound Patents by the outside counsel selected by Diversa, IBP shall so inform Diversa in writing, and such patent applications shall be entitled transferred to filea different, prosecute mutually-acceptable outside counsel. Diversa shall provide IBP a list identifying at least three (3) alternative outside counsel, identify its first preferred choice within such list and maintain request approval of its first preferred choice from IBP. IBP’s approval shall not be unreasonably withheld. If IBP has a reasonable basis to disagree with the selection of such outside counsel, the Parties shall negotiate, in good faith, the selection of an alternative outside counsel from the remaining outside counsel identified in the Territory all list. The Parties shall confer with respect to the list of countries outside the United States in which patent applications within the Compound Patents will be filed and patents that claim maintained, and with prior notice, IBP may decline to pay any CUBIST Inventions fees or expenses with respect to individual countries. In such case, Diversa shall make the sole decision about whether to pursue such patent applications in such countries, at its sole expense.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL Diversa shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST furnish IBP with all material documentation copies of draft patent applications and correspondence from, sent relating thereto to and from governmental patent agencies and other authorities which relate to Compound Patents. Diversa shall permit IBP to offer its comments thereon before Diversa makes a submission to a governmental patent agency or filed other authority which could materially affect the scope or validity of the patent coverage with patent offices in the Territory regarding any XTL respect to such Compound Patent, (iii) provide CUBIST with a reasonable opportunity and IBP shall offer its comments promptly; provided IBP’s failure to review and comment upon all filings with respond within [ * ] of receipt of the draft patent application or correspondence relating thereto shall be deemed approval of such patent offices application or correspondence. Diversa shall seek to incorporate IBP’s comments in advance of submissions to such its patent officesprosecution activities, and to the extent that it declines to incorporate such comments, shall explain to IBP its reasons for such decision. Diversa shall also keep IBP informed of its patent prosecution for all Compound Patents that are subject to the License of Section 4.1, and shall confer reasonably with IBP and provide IBP with copies of any patent applications and correspondence related thereto to and from governmental patent agencies or other authorities to the extent reasonably requested by IBP to monitor the scope and nature of the rights to which IBP holds a license under this Agreement.
(ivc) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails If Diversa decides not to file any Compound Patent, or prosecute to abandon any XTL Patent patent application, patent or other intellectual property right covering such matter, either on a worldwide basis or in any country in the Territoryparticular countries, CUBIST it shall have the right, but not the obligationprovide IBP reasonable written notice of such intention, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST toIBP, fileat the sole option and expense of IBP, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name patent application, patent, or other intellectual property right in the name of the relevant licensor of XTL as identified IBP. In such event, Diversa shall cooperate fully with IBP and shall provide to IBP whatever assignments and other documents that may be needed in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenanceconnection therewith.
(d) With respect IBP may, at its election and from time to time, disclaim any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention special rights under paragraph (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory a) above with respect to any Joint Inventionparticular patent application(s) included within Compound Patents, XTL in which case Diversa shall have such right and upon exercise by XTL assume exclusive control over the prosecution of such rightapplication(s) at its sole expense. In such case, XTL IBP shall have retain the right rights set forth elsewhere in this Section 5.2 with respect to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLpatent prosecution covering other Program Inventions.
Appears in 2 contracts
Samples: Drug Discovery, Development, and License Agreement (Intrabiotics Pharmaceuticals Inc /De), Drug Discovery, Development, and License Agreement (Intrabiotics Pharmaceuticals Inc /De)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled CytRx agrees to file, ---------------------------------------------- prosecute and maintain in the Territory all patent applications Major Pharmaceutical Markets, upon appropriate consultation with Vical, the Patent Rights owned in whole or in part by CytRx and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees licensed to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent officesVical under this Agreement. In addition, and (iv) shall considerto the extent legally available CytRx shall, in good faithat Vical's request, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent Rights in such country in a timely manner; provided that in other countries, which costs shall be reimbursed by Vical within sixty (60) days of receipt of invoices thereof and shall be creditable toward any event any such XTL Patents future royalty payments owed by Vical pursuant to Section 4.4 hereof. These terms shall always be registered in XTL’s name or include the additional patent rights requested and agreed to by Vical as described in the name November 16, 2001 agreement between CytRx and Vical and shall be included in this Agreement as Addendum 4.0. CytRx shall keep Vical advised of the relevant licensor status of XTL as identified in writing the actual and prospective patent filings and shall provide advance copies of any papers related to CUBIST by XTL.
(c) With respect to all filingsthe filing, prosecution and maintenance of such patent filings. Vical shall have the right to review and propose recommendations regarding any submission to be made by CytRx in connection with the filing, prosecution, and maintenance of the Patent pursuant Rights, wherein CytRx agrees to this Section 12.2consider such recommendations and not unreasonably decide not to implement same, and Vical agrees to bear any additional expenses or fees resulting therefrom. With respect to all filings hereunder in the filing Party Major Pharmaceutical Markets, CytRx shall be responsible for payment of for all costs and expenses related to such Patent filing, prosecution or maintenancefilings.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTL.
Appears in 2 contracts
Samples: License Agreement (Cytrx Corp), License Agreement (Cytrx Corp)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST It is the intention of the Parties to secure broad patent protection for Improvements. Amylin shall be entitled responsible for the preparation, filing, prosecution and maintenance of all Amylin Patents and Patents arising from Joint Improvements ("Joint Patents"). Lilly shall be responsible for the preparation, filing, prosecution and maintenance of all Lilly Patents. The Parties shall mutually agree upon the countries outside of the U.S. in which to file Joint Patents; provided, however, that if there is a dispute between the Parties as to where to file, prosecute the more comprehensive filing will be made. Each Party shall consider in good faith the requests and maintain in suggestions of the Territory all patent applications other Party with respect to strategies for filing and patents that claim prosecuting Patents claiming any CUBIST Inventions at its sole expenseProduct, or the manufacture, use or sale of any Product. The Party responsible for the filing, prosecution, maintenance, enforcement and defense of any such Patents shall keep the other Party informed of progress with regard thereto and afford the other Party a reasonable opportunity to comment prior to filing of patents. All Patent Expenses incurred on and after the Effective Date with respect to (i) Amylin Patents shall be paid by Amylin, and (ii) Lilly Patents shall be paid by Lilly.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwillingAmylin desires to abandon any Amylin Patent claiming a manufacture, unable use or otherwise fails composition of Compound or Product, Amylin shall provide reasonable prior written notice to file or prosecute any XTL Patent Lilly of such intention to abandon (which notice shall, in any country in event, be given no later than thirty (30) days prior to the Territory, CUBIST next deadline for any action that may be taken with respect to such Amylin Patent with the applicable patent office) and Lilly shall have the right, but not the obligation, to assume responsibility for the prosecution and XTL maintenance thereof in Amylin's name (and at Lilly's expense). In the event that Amylin desires to abandon any Joint Patent, Amylin shall provide CUBIST with reasonable prior written notice to Lilly of such intention to abandon (which notice shall, in any event, be given no later than thirty (30) days prior to the next deadline for any action that may be taken with respect to such Joint Patent with the applicable patent office) and Lilly shall have the right, but not the obligation, to assume responsibility for the prosecution and maintenance thereof in the names of both the Parties (and at Lilly's expense). In the event that Lilly desires to abandon any Lilly Patent claiming a manufacture, use or composition of Compound or Product, Lilly shall provide reasonable prior written notice to permit CUBIST toAmylin of such intention to abandon (which notice shall, filein any event, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as be given no later than thirty (30) days prior to the next deadline for any action that may be reasonably necessary taken with respect to allow CUBIST such Lilly Patent with the applicable patent office) and Amylin shall have the right, but not the obligation, to file, prosecute assume responsibility for the prosecution and maintain such XTL Patent maintenance thereof in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s Lilly's name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.and at Amylin's expense
(c) With respect to all filings, The Parties agree that the Patent Expenses (including prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party costs) incurred in connection with Joint Patents shall be responsible for payment of all costs equally shared by the Parties (i.e., 50% paid by Amylin and expenses related to such Patent filing, prosecution or maintenance50% paid by Lilly).
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTL.
Appears in 2 contracts
Filing, Prosecution and Maintenance of Patents. 5.2.1 Except as provided in this Section 5.2 or Section 5.5, each Party shall have the sole right, at its own expense, to control the filing, prosecution, maintenance, defense and enforcement of its own patents and patent applications.
5.2.2 Diversa shall confer with IBP regarding its plans to secure patent protection for any Program Inventions owned by Diversa which cover the composition, manufacture or use of Compounds, Compound Derivatives, Active Substructures and/or Products ("Compound Patents"). The Parties shall seek to agree on the patent strategy to be followed in securing such protection.
(a) CUBIST Diversa shall select outside counsel to prepare, prosecute, and maintain each patent application and resulting patent within the Compound Patents, and IBP shall reimburse Diversa for [***] incurred in connection with such work. The Parties shall have equal access to such outside counsel. The Parties shall seek to agree on the prosecution of patent applications within the Compound Patents, but in the event of disagreement, Diversa shall control the prosecution. If IBP is dissatisfied with the prosecution of patent applications within the Compound Patents by the outside counsel selected by Diversa, IBP shall so inform Diversa in writing, and such patent applications shall be entitled transferred to filea different, prosecute mutually-acceptable outside counsel. Diversa shall provide IBP a list identifying at least three (3) alternative outside counsel, identify its first preferred choice within such list and maintain request approval of its first preferred choice from IBP. IBP's approval shall not be unreasonably withheld. If IBP has a reasonable basis to disagree with the selection of such outside counsel, the Parties shall ---------------------- * CONFIDENTIAL TREATMENT REQUESTED negotiate, in good faith, the selection of an alternative outside counsel from the remaining outside counsel identified in the Territory all list. The Parties shall confer with respect to the list of countries outside the United States in which patent applications within the Compound Patents will be filed and patents that claim maintained, and with prior notice, IBP may decline to pay any CUBIST Inventions fees or expenses with respect to individual countries. In such case, Diversa shall make the sole decision about whether to pursue such patent applications in such countries, at its sole expense.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL Diversa shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST furnish IBP with all material documentation copies of draft patent applications and correspondence from, sent relating thereto to and from governmental patent agencies and other authorities which relate to Compound Patents. Diversa shall permit IBP to offer its comments thereon before Diversa makes a submission to a governmental patent agency or filed other authority which could materially affect the scope or validity of the patent coverage with patent offices in the Territory regarding any XTL respect to such Compound Patent, (iii) provide CUBIST with a reasonable opportunity and IBP shall offer its comments promptly; provided IBP's failure to review and comment upon all filings with respond within [***] of receipt of the draft patent application or correspondence relating thereto shall be deemed approval of such patent offices application or correspondence. Diversa shall seek to incorporate IBP's comments in advance of submissions to such its patent officesprosecution activities, and to the extent that it declines to incorporate such comments, shall explain to IBP its reasons for such decision. Diversa shall also keep IBP informed of its patent prosecution for all Compound Patents that are subject to the License of Section 4.1, and shall confer reasonably with IBP and provide IBP with copies of any patent applications and correspondence related thereto to and from governmental patent agencies or other authorities to the extent reasonably requested by IBP to monitor the scope and nature of the rights to which IBP holds a license under this Agreement.
(ivc) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails If Diversa decides not to file any Compound Patent, or prosecute to abandon any XTL Patent patent application, patent or other intellectual property right covering such matter, either on a worldwide basis or in any country in the Territoryparticular countries, CUBIST it shall have the right, but not the obligationprovide IBP reasonable written notice of such intention, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST toIBP, fileat the sole option and expense of IBP, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name patent application, patent, or other intellectual property right in the name of the relevant licensor of XTL as identified IBP. In such event, Diversa shall cooperate fully with IBP and shall provide to IBP whatever assignments and other documents that may be needed in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenanceconnection therewith.
(d) With respect IBP may, at its election and from time to time, disclaim any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention special rights under paragraph (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory a) above with respect to any Joint Inventionparticular patent application(s) included within Compound Patents, XTL in which case Diversa shall have such right and upon exercise by XTL assume exclusive control over the prosecution of such rightapplication(s) at its sole expense. In such case, XTL IBP shall have retain the right rights set forth elsewhere in this Section 5.2 with respect to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLpatent prosecution covering other Program Inventions.
Appears in 1 contract
Samples: Drug Discovery, Development, and License Agreement (Diversa Corp)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled Each of Transcell and Interneuron agrees to file, prosecute and maintain in the countries in the Territory all patent applications listed on Schedule 7.1 hereto, or such other countries as the Parties may agree, upon appropriate consultation with Merck, the Transcell Patent Assets and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees the Interneuron Patent Assets, respectively, licensed to file, prosecute and maintain the XTL Patents at its sole expense, Merck under this Agreement; provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution Transcell/Merck Joint Information and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs Inventions or Interneuron/Merck Joint Information and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST Merck shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim patent applications and (ii) if Transcell or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST Interneuron elects not to file any a patent application in the Territory with respect to any Joint Inventionon Transcell Information and Inventions or Interneuron Information and Inventions, XTL shall have such right and upon exercise by XTL of such right, XTL Merck shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents such patent application, and Transcell or The information below marked by * and [ ] has been omitted pursuant to a request for confidential treatment. The omitted portion has been separately filed with the Commission. -------------------------------------------------------------------------------- Interneuron, as the case may be, shall cooperate fully in the filing and prosecution of such patents. In each case, the filing Party shall give the non-filing Parties an opportunity to review the text of the application before filing, shall consult with the non-filing Parties with respect thereto, and shall supply the non-filing Parties with a copy of the application as filed, together with notice of its filing date and serial number. Each Party shall keep the other Parties advised of the status of the actual and prospective patent filings and upon the request of another Party, provide advance copies of any country within papers related to the Territory in a timely basisfiling, prosecution and maintenance of such patent filings. CUBIST Each Licensor shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST Merck of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted licensed or sub-licensed to Merck by XTLsuch Licensor. The Party that is the filing Party under this Section shall be responsible for the payment of all costs and expenses related to such filing.
Appears in 1 contract
Samples: Research Collaboration and License Agreement (Intercardia Inc)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute Each of Schering ---------------------------------------------- and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL Myriad agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTLthe other, Patents that claim or cover any the Patent Rights owned by it and licensed under this Agreement. With respect to Joint Invention (a “Joint Patent”); howeverInventions, in the event that CUBIST elects not to file any patent application Committee shall decide which party shall file, prosecute and maintain in the Territory the Patent Rights jointly owned by Schering and Myriad. Schering shall be responsible for the costs and expenses for the filing, prosecution and maintenance of the Patent Rights owned by it. With respect to Patent Rights owned by Myriad, Myriad shall be responsible for the costs and expenses for the filing, prosecution and maintenance of the Patent Rights owned by it in the United States and with respect to any Joint Inventionsuch costs and expenses for the filing, XTL prosecution and maintenance of the Patent Rights outside of the United States, Schering shall have reimburse Myriad for such right costs and upon exercise by XTL expenses so long as, and only if, Schering has agreed in writing with the filing, prosecution and maintenance of such rightPatent Rights. With respect to Joint Inventions, XTL the costs and expenses therefore shall be apportioned by the Committee during the Research Term and thereafter by the parties, in accordance with and consistent with the principals set forth above. Notwithstanding anything contained herein to the contrary, Myriad shall be responsible for the filing, prosecution and maintenance in the Territory and the costs and expenses therefore for Patent Rights relating to Diagnostics and veterinary products. Each of Schering and Myriad shall provide to the other reasonable assistance to file and prosecute the Patent Rights, which shall include, without limitation, providing any data and information relating to the invention and access to the inventors of said inventions, as well as causing the execution of any patent documents. Each of Schering and Myriad shall have the right to use outside counsel to file and prosecute and maintain the Patent Rights, to be selected in the Territorycase of jointly owned or Schering owned Patent Rights, upon appropriate consultation with CUBISTby Schering and reasonably acceptable to Myriad and, in the case of Myriad owned Patent Rights, to be selected by Myriad and reasonably acceptable to Schering. In each case, the Joint Patents filing party shall give the non-filing party an opportunity to which such Joint Invention relatesreview the text of the applications before filing, shall consult with the non-filing party with respect thereto, and shall supply the non-filing party with a copy of the applications as filed, together with notice of its filing date and serial number. Each of XTL Schering and CUBIST Myriad shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in keep the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL other advised of the grantstatus of the actual and prospective patent filings (including, lapsewithout limitation, revocation, surrender, invalidation or abandonment in the Territory grant of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST Rights) and upon the request of the granta party, lapse, revocation, surrender, invalidation or abandonment provide advance copies of any Joint Patent being prosecuted by XTLpapers related to the filing, prosecution and maintenance of such patent filings.
Appears in 1 contract
Samples: Research Collaboration and License Agreement (Myriad Genetics Inc)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to fileNEUROGEN agrees, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent officesas it determines appropriate, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In subject to the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name further provisions of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance8.2, to file, prosecute and maintain (including filing and/or defending interferences, oppositions, reexaminations and reissues) in the Territory, Patents relating to the NEUROGEN Know-How and the NEUROGEN Inventions, and MSD agrees, as it determines appropriate, to file, prosecute and maintain (including filing and/or defending interferences, oppositions, reexaminations and reissues) in the Territory, Patents relating to the MSD Know-How, the MSD Inventions and the Joint Inventions. MSD shall be responsible for all of its internal and external costs and expenses incurred in filing, prosecuting and maintaining the MSD Patents and Joint Patents. All applications for NEUROGEN Patents shall be filed, prosecuted, and maintained (including filing and/or defending interferences, oppositions, reexaminations and reissues) by NEUROGEN; provided that MERCK shall reimburse NEUROGEN for [ ]* of all external costs associated with such filings, prosecutions, and maintenance. With respect to each Patent filed in accordance with this Article VIII, the filing Party shall give the non-filing Party an opportunity to review the text of the application before filing where reasonably feasible, shall consult with the non-filing Party with respect thereto where reasonably feasible, and shall supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number. Each Party shall keep the other advised of the status of the Patent filings and upon the request of the other Party, provide copies of any country within papers related to the Territory in a timely basisfiling, prosecution and maintenance of such Patent filings. CUBIST Each Party shall cooperate fully and shall cause its employees to cooperate fully, on the filing and prosecution of such Patents. Each Party shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST other of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLPatents for which the Party is responsible for the filing, prosecution and maintenance.
Appears in 1 contract
Samples: Research Collaboration and License Agreement (Neurogen Corp)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST Except as set forth in (b) and (c) below, WYETH shall be entitled responsible and bear the costs to file, prosecute and maintain (including filing and/or defending interferences, oppositions, reexaminations and reissues) in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees to fileTerritory, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBISTLicensed Patent Rights. In the event that XTL is unwillingWYETH elects not to prosecute or maintain any of the Licensed Patent Rights, unable or otherwise fails WYETH shall grant NEUROGEN the timely opportunity to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Licensed Patent in such country in a timely manner; provided that in any event any such XTL Patents Rights at NEUROGEN’s expense. Each Party shall always be registered in XTL’s name or in keep the name other advised of the relevant licensor status of XTL as identified in writing the Licensed Patent Right filings for which it receives notice and upon the request of the other Party, provide copies of any papers related to CUBIST by XTL.
(c) With respect to all filingsthe filing, prosecution and maintenance of any Patent pursuant such filings. Each Party shall cooperate fully and shall cause its employees to this Section 12.2cooperate fully, on the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relatesLicensed Patent Rights. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST Party shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST other of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Licensed Patent Rights in the Field for which the Party receives notice.
(b) As of the Effective Date, NEUROGEN shall have the first right, and shall bear the costs, to file Patents in Europe including any continuation or divisional of any prior Licensed Patent Right and WYETH shall provide reasonable assistance as may be requested by NEUROGEN to complete such filings and prosecution for Licensed Patent Rights, at NEUROGEN’s expense. NEUROGEN shall provide to WYETH copies of all communications sent to and received from any patent office pertaining to Licensed Patent Rights being prosecuted under this Section 9.1(b) by NEUROGEN including, but not limited to, draft patent applications, filing receipts, office actions, responses and/or amendments, and notices of allowance. WYETH shall be given reasonable opportunity prior to the earlier of the expiration of any shortened statutory period for response or anticipated filing to review and comment upon the text of any such communication. In the event that the Parties, after good faith discussions, cannot agree with respect to any decision to be made with respect to the preparation, filing, prosecution and maintenance of the Licensed Patent Rights being prosecuted by XTLNEUROGEN under this Section 9.1(b) (including decisions relating to interference, opposition, revocation, reexamination and similar proceedings related to the Licensed Patent Rights), NEUROGEN shall make such decision, provided that such decision shall not have a material adverse effect on the scope and/or validity of the Licensed Patent Rights. In the event NEUROGEN elects not to prosecute or maintain any of the Licensed Patent Rights it files and prosecutes under this Section 9.1(b), NEUROGEN shall xxxxx XXXXX the timely opportunity to prosecute and maintain such Licensed Patent Rights at WYETH’s expense.
(c) As of the Effective Date, NEUROGEN shall have the first right, and shall bear the costs, to file Patents for additional formulations of Compound or Product including sustained release formulations including any continuation or divisional of any prior Licensed Patent Right, and WYETH shall provide reasonable assistance as may be requested by NEUROGEN to complete such filings and prosecution for Licensed Patent Rights, at NEUROGEN’s expense. NEUROGEN shall provide to WYETH copies of all communications sent to and received from any patent office pertaining to Licensed Patent Rights being prosecuted under this Section 9.1(c) by NEUROGEN including, but not limited to, draft patent applications, filing receipts, office actions, responses and/or amendments, and notices of allowance. WYETH shall be given reasonable opportunity prior to the earlier of the expiration of any shortened statutory period for response or anticipated filing to review and comment upon the text of any such communication. In the event that the Parties, after good faith discussions, cannot agree with respect to any decision to be made with respect to the preparation, filing, prosecution and maintenance of the Licensed Patent Rights being prosecuted by NEUROGEN under this Section 9.1(c) (including decisions relating to interference, opposition, revocation, reexamination and similar proceedings related to the Licensed Patent Rights), NEUROGEN shall make such decision, provided that such decision shall not have a material adverse effect on the scope and/or validity of the Licensed Patent Rights. In the event NEUROGEN elects not to prosecute or maintain any of the Patents it files and prosecutes under this Section 9.1(c), NEUROGEN shall xxxxx XXXXX the timely opportunity to prosecute and maintain such Licensed Patent Rights at WYETH’s expense
Appears in 1 contract
Samples: License Agreement (Neurogen Corp)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, *Confidential Treatment Requested. Material has been omitted and filed separately with the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenanceCommission.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTL.
Appears in 1 contract
Filing, Prosecution and Maintenance of Patents. As between the Parties, Genmab shall have the sole right and responsibility for filing, prosecuting and maintaining any Licensed Patents and any patents and patent applications within the Medarex Technology relating to the Compound or any Product, and for any interferences, substitutions, extensions (a) CUBIST including supplementary protection certificates), oppositions, registrations, confirmations, reissues, continuations, divisionals, continuations-in-part, re-examinations, renewals or the like thereof or thereto, any patents or patent applications claiming priority from such patents and patent applications, and any foreign counterparts of any of the foregoing, in each case, filed and/or pending as of the Closing. TenX shall pay to Genmab on a monthly basis an amount equal to all its Activity Costs and FTE Costs; provided such Activity Costs and FTE Costs which apply to patent family P/24 listed on Schedule B covering compounds other than Compound or Product shall be entitled pro-rated for the number of compounds covered therein for purposes of this Agreement in conducting such activities commencing from the Effective Date. The Parties agree that currently P/24 covers [**] in addition to filethe Compound. Genmab shall provide budget estimates of the Activity Costs and FTE Costs on a yearly basis it being understood that uncertainties exist as to which events will take place and when, prosecute and maintain the amount of work associated herewith. In case of an estimated Activity Cost above [**] US Dollars ($[**]) TenX shall pay such cost in advance upon the Territory all request of Genmab. Subject to the rights of Genmab’s licensors, TenX shall have the sole right and responsibility for filing, prosecuting and maintaining any patents and patent applications for all inventions that are made by it or on its behalf (including those of Genmab’s employees performing services pursuant to this Agreement) relating to the Compound or any Product, and for any interferences, substitutions, extensions (including supplementary protection certificates), oppositions, registrations, confirmations, reissues, continuations, divisionals, continuations-in-part, re-examinations, renewals or the like thereof or thereto, any patents that claim or patent applications claiming priority from such patents and patent applications, and any CUBIST Inventions foreign counterparts of any of the foregoing, filed after the Closing, at its sole cost and expense.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL . TenX shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to keep Genmab informed of any developments regarding any patents or patent applications filed with patent offices under this Section 8.01 in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments written quarterly report provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTLunder Section 5.06.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTL.
Appears in 1 contract
Samples: License and Commercialization Agreement (Emergent BioSolutions Inc.)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL Inventions. BIOCHEMIE agrees to file, prosecute and maintain in [*] and, to the XTL Patents extent included [*] , upon appropriate consultation with CUBIST, the BIOCHEMIE Patents. Except to the extent otherwise provided pursuant to the next sentence, BIOCHEMIE may, at its sole expensediscretion, providedchoose to file, howeverprosecute and maintain the BIOCHEMIE Patents in [*] upon appropriate consultation with CUBIST. BIOCHEMIE shall also file, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation prosecute and correspondence from, sent to or filed with patent offices maintain the BIOCHEMIE Patents in any country in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST[*]. In the event that XTL BIOCHEMIE is unwilling, unable or otherwise fails to file or prosecute any XTL Patent BIOCHEMIE Patents in any country in the TerritoryTerritory [*], then CUBIST shall have such right and, upon exercise of such right by CUBIST, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice be entitled to permit CUBIST to, file, prosecute and/or and maintain such XTL Patent BIOCHEMIE Patents in such country, and XTL BIOCHEMIE shall execute such documents and perform such acts * Confidential Treatment Requested: omitted portions filed with the Commission. [*] as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent [*] in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST . [*] shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL[*], Patents that claim or cover any Joint Invention (a “Joint Patent”)Patents; howeverHOWEVER, in the event that CUBIST [*] elects not to file any patent application in the Territory with respect to any Joint Invention, XTL [*] shall have such right and upon exercise by XTL [*] of such right, XTL [*] shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST[*], the Joint Patents to which such Joint Invention relates. Each of XTL BIOCHEMIE and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST[*], in the first instance, and XTL[*], in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST In each case, the filing Party shall give the non-filing Party an [*] before filing (but in no event less than [*] days), shall [*] with the non-filing Party with respect thereto, shall, prior to filing any application, [*] that the non-filing Party [*] on a timely basis to such application and shall supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number and all substantive prosecution. Each Party shall keep the other advised of the status of the actual and prospective patent filings described above in this Section 8.2 and, upon the request of the other, [*] related to the filing, prosecution and maintenance of such patent filings. [*] shall promptly give notice to XTL [*] of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST[*]. XTL [*] shall promptly give notice to CUBIST [*] of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent [*]or [*] being prosecuted by XTL[*]. With respect to all filings hereunder, the filing Party shall be responsible for payment of all costs and expenses related to such filings.
Appears in 1 contract
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute Each of ATI and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL BioChem agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTLthe other, Patents that claim its respective Patent Rights under this Agreement. Except for expenses already incurred by ATI for patents filed by or cover any Joint Invention granted to ATI prior to the Effective Date of this Agreement, except as otherwise provided for in Subsection 4.2(b), BioChem shall be responsible for the costs and expenses for the filing, prosecution and maintenance of all Patent Rights during the Research Term and for one (a “Joint Patent”); however, in 1) year after the event that CUBIST elects not to file any patent application in end of the Territory Research Term. Starting with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instanceyear after the Research Term, each Party shall be responsible for the costs and expenses for the filing, prosecution and maintenance of all of its respective Patent Rights. The costs and expenses incurred by BioChem to file, prosecute and maintain Joint Patents ATI Patent Rights will be credited in any country within full against the Territory royalties to be paid by BioChem to ATI pursuant to Article III hereof, in a timely basisaccordance with the provisions hereof. CUBIST Notwithstanding anything contained herein to the contrary, ATI shall promptly give notice to XTL of be responsible for the grantfiling, lapse, revocation, surrender, invalidation or abandonment prosecution and maintenance in the Territory and the costs and expenses therefore for Patent Rights relating solely to veterinary products.
(b) Each of BioChem and ATI shall provide to the other reasonable assistance to file and prosecute such other Party's Patent Rights, which shall include, without limitation, providing any data and information relating to the invention and access to the inventors of said inventions, as well as causing the execution of any Joint patent documents. Each of BioChem and ATI shall have the right to use outside counsel to file and prosecute its respective Patent being prosecuted Rights, in the case of BioChem Patent Rights to be selected by CUBISTBioChem and reasonably acceptable to ATI and, in the case of ATI Patent Rights, to be selected by ATI and reasonably acceptable to BioChem. XTL In each case, the filing Party shall promptly give notice the non-filing Party an opportunity to CUBIST review the text of the grantproposed applications at least thirty (30) days before filing, lapseshall consult with the non-filing Party with respect thereto, revocationand shall afford due consideration to the other Party's comments and concerns with respect to matters relating to the filing Party's Patent Rights, surrenderincluding the choice of countries in which to file such applications. Notwithstanding anything to the contrary herein contained, invalidation or abandonment ATI shall seek approval of the Joint Steering Committee before filing any Joint Patent being prosecuted by XTL.patent application in a country other than a Major Market Country, failing which
Appears in 1 contract
Samples: License Agreement (Immunogen Inc)
Filing, Prosecution and Maintenance of Patents. 7.1.1 For Novel Obesity-related Genes for which (a) CUBIST shall be entitled MERCK has obtained an exclusive license; or (b) MERCK directs ZNOMICS in writing to file a patent application, ZNOMICS agrees to file, prosecute and maintain in Major Market Countries, or other countries upon the Territory all patent applications mutual written agreement of the Parties, at MERCK's reasonable cost and patents that claim any CUBIST Inventions at its sole expense.
expense and upon appropriate consultation with MERCK, the Patent Rights under this Agreement (b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, "Funded Patent Rights"); provided, however, that XTL shall (i) use outside counsel reasonably acceptable with respect to CUBISTJoint Information and Inventions, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST MERCK shall have the rightfirst right to file patent applications. With respect to ZNOMICS Information and Inventions that are not Funded Patent Rights, but ZNOMICS may elect not to file and if so, ZNOMICS shall notify MERCK and MERCK shall have the obligationright to file such patent applications. In such event, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL ZNOMICS shall execute such documents and perform such acts at ZNOMICS's expense as may be reasonably necessary to allow CUBIST effect an assignment of such Patent Rights to file, prosecute and maintain such XTL Patent in such country MERCK in a timely manner; provided that in any event any manner to allow MERCK to continue such XTL Patents prosecution or maintenance. In each case, the filing Party shall always be registered in XTL’s name or in give the name non-filing Party an opportunity to review the text of the relevant licensor application before filing, shall consult with the non-filing Party with respect thereto, and shall supply the non-filing Party with a copy of XTL the application as identified in writing filed, together with notice of its filing date and serial number. ZNOMICS shall keep MERCK advised of the status of the actual and prospective patent filings and, upon MERCK's request, shall provide advance copies of any papers related to CUBIST by XTL.
(c) With respect to all filingsthe filing, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relatesfilings. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST ZNOMICS shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST MERCK of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Funded Patent being prosecuted Rights for which ZNOMICS is responsible for the filing, prosecution and maintenance.
7.1.2 For any Novel Obesity-related Gene that MERCK has licensed on a non-exclusive basis, MERCK shall not be required to reimburse ZNOMICS for the preparation, filing, prosecution and maintenance of such Patent Rights unless MERCK elects to exercise its Exclusive Option for such Novel Obesity-related Gene or unless MERCK direct ZNOMICS in writing to file a patent application, in which case the provisions of Section 7.1.1 shall apply.
7.1.3 MERCK shall cease payment for the preparation, filing, prosecution and maintenance of Funded Patent Rights upon expiration or termination of (a) the corresponding exclusive license for any Novel Obesity-related Gene; or (b) the corresponding non-exclusive license regarding which MERCK has directed ZNOMICS to file patent protection.
7.1.4 Upon the granting of a non-exclusive license for Funded Patent Rights by XTLZNOMICS to a Third Party, ZNOMICS shall reimburse MERCK the pm-rata share of the preparation, filing, prosecution and maintenance of such Funded Patent Rights.
7.1.5 MERCK, at its sale discretion, may, upon reasonable advance notice to ZNOMICS, cease payment for the preparation, filing, prosecution and maintenance of Funded Patent Rights for any Novel Obesity-related Genethat MERCK has not licensed on an exclusive basis. In such event, ZNOMICS shall have the right to continue the preparation, filing, prosecution and maintenance of Funded Patent Rights at its own cost and expense, or to discontinue such activities.
Appears in 1 contract
Filing, Prosecution and Maintenance of Patents. (a) CUBIST 12.2.1 As between the Parties, NGM shall be entitled to fileresponsible for preparing, prosecute filing, prosecuting and maintain in maintaining the Territory all patent applications NGM Patents and patents that claim any CUBIST Inventions those Collaboration Patents solely owned by NGM (“NGM Prosecuted Patents”). [***].
12.2.2 As between the Parties, Merck shall have the sole right, at its sole expense.
(b) XTL agrees expense and in its sole discretion, to prepare, file, prosecute and maintain the XTL Merck Patent Rights and Merck Product Patents. As between the Parties, Merck shall have the first right, at its sole expense and in its sole discretion, to prepare, file, prosecute and maintain the Collaboration Patents solely owned by Merck (“Merck Collaboration Prosecuted Patents”), except for Merck Tail Period Patents, with respect to which Merck shall have the sole right. If Merck does not elect to file or proposes to abandon any Merck Collaboration Prosecuted Patent (other than a Merck Tail Period Patent), Merck shall notify NGM (at least [***] days prior to any filing or payment due date, or any other due date that requires action in order to avoid loss of rights, in connection with such Merck Collaboration Prosecuted Patent) and NGM shall have the right to continue the prosecution of such Patent Rights at its sole expense. If NGM assumes preparation, providedfiling, howeverprosecution, that XTL shall (i) use outside counsel reasonably acceptable maintenance and enforcement of any such Patent Rights pursuant to CUBISTthis Section 12.2.2, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL Merck shall execute such documents and perform such acts acts, in a timely manner, at NGM’s request and Merck’s expense, as may be reasonably necessary to allow CUBIST permit NGM to fileassume the preparation, prosecute filing, prosecution, maintenance and maintain enforcement of such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in Rights. Notwithstanding the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With forgoing, with respect to all filingsCollaboration Patents that are jointly owned by the Parties and that primarily claim or cover a Small Molecule Collaboration Compound (as opposed to a Collaboration Compound), prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST Merck shall have the first right to prepare, file, prosecute prosecute, maintain and enforce such Patent Rights.
12.2.3 With respect to Collaboration Patents that are jointly owned by the Parties (“Joint Collaboration Patents”), NGM shall have the first right to prepare, file, prosecute, maintain in and enforce such Patent Rights, which shall be deemed NGM Prosecuted Patents for purposes of Sections 12.2.1 and 12.2.5.
12.2.4 In the Territory, upon appropriate consultation with XTL, case of Merck Collaboration Prosecuted Patents (including Joint Collaboration Patents that are prosecuted by Merck pursuant to Section 12.2.2 but excluding Merck Collaboration Prosecuted Patents that claim or cover any Joint a Collaboration Invention conceived or reduced to practice by or on behalf of Merck or its Affiliates or subcontractors, as a result of activities undertaken as part of the Collaboration during the [***] Research Program Tail Period or the CVM Research Program Tail Period (a such Merck Collaboration Prosecuted Patents, the “Joint PatentMerck Tail Period Patents”); however), in Merck shall give NGM an opportunity to review the event that CUBIST elects not to file any text of the patent application in the Territory before filing, shall implement NGM’s reasonable comments with respect to any Joint Inventionthereto and shall supply NGM with a copy of the application as filed, XTL together with notice of its filing date and serial number. Merck shall have such right and upon exercise by XTL keep NGM advised of the status of such right, XTL shall have the right to prosecute and maintain in the Territorypatent filings and, upon appropriate consultation NGM’s request, shall provide advance copies of any papers related to the filing, prosecution and maintenance of such patent filings, shall implement NGM’s reasonable comments with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL respect thereto and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST NGM of the grant, lapse, revocation, surrender, invalidation or abandonment of any such patent filings. If Merck proposes to abandon any Joint Collaboration Patents that Merck initiated prosecution of pursuant to Section 12.2.2, then it shall notify NGM (at least [***] days prior to any filing or payment due date, or any other due date that requires action in order to avoid loss of rights, in connection with such Patent being prosecuted by XTLRights) and NGM shall have the right to continue the preparation, filing, prosecution and maintenance of such Patent Rights, which shall be deemed NGM Prosecuted Patents for purposes of Sections 12.2.1 and 12.2.5. If NGM assumes preparation, filing, prosecution and maintenance of any such Patent Rights pursuant to this Section 12.2.4, then Merck shall execute such documents and perform such acts, in a timely manner, at NGM’s request and expense, as may be reasonably necessary to permit NGM to assume the preparation, filing, prosecution and maintenance of such Patent Rights.
12.2.5 In the case of NGM Prosecuted Patents (including any Joint Collaboration Patents) except for [***], NGM shall give Merck an opportunity to review the text of the application before filing, shall implement Merck’s reasonable comments with respect thereto and shall supply Merck with a copy of the application as filed, together with notice of its filing date and serial number. NGM shall keep Merck advised of the status of such patent filings and upon Merck’s request, shall provide advance copies of any papers related to the filing, prosecution and maintenance of such patent filings, shall implement Merck’s reasonable comments with respect thereto and shall promptly give notice to Merck of the grant, lapse, revocation, surrender, invalidation or abandonment of any such patent filings. If NGM does not elect to file or proposes to abandon any such NGM Prosecuted Patents (including any Joint Patents), then it shall notify Merck (at least [***] days prior to any filing or payment due date, or any other due date that requires action in order to avoid loss of rights, in connection with such Patent Rights) and Merck shall have the right to continue the preparation, filing, prosecution and maintenance of such Patent Rights at its sole expense. If Merck assumes preparation, filing, prosecution and maintenance of any such Patent Rights pursuant to this Section 12.2.5, then NGM shall execute such documents and perform such acts, in a timely manner, at Merck’s request and expense, as may be reasonably necessary to permit Merck to assume the preparation, filing, prosecution and maintenance of such Patent Rights.
Appears in 1 contract
Samples: Research Collaboration, Product Development and License Agreement (NGM Biopharmaceuticals Inc)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST 9.3.1 IFF shall be entitled use commercially reasonable efforts to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees to file, prosecute and maintain the XTL Redpoint Patents in Redpoint’s name at IFF’s sole cost and expense in the United States and in such other jurisdictions as IFF may elect in its sole expensecommercially reasonable discretion. As soon as practicable after the Effective Date, providedRedpoint shall provide IFF with copies of any patent applications included within the Redpoint Patents which are not publicly available. IFF shall be responsible for filing, howeverprosecuting and maintaining the Redpoint Patents, including converting the provisional Patent applications into non-provisional Patent applications and prosecuting and maintaining any foreign prosecution of the Patent applications. In addition, IFF may combine one or more provisional applications into a single application if IFF determines, in its reasonable discretion, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to such action will not delay issuance of a pending Redpoint Patent or filed with patent offices in decrease the Territory regarding any XTL Patent, (iii) provide CUBIST with likelihood of issuance of a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL pending Redpoint Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that such action does not adversely affect or reduce the scope of such pending Redpoint Patent.
9.3.2 IFF shall provide Redpoint with advance copies (which may be in any event any such XTL Patents shall always be registered in XTL’s name or in the name draft form) of all material documents and filings as well as material correspondence from the relevant licensor of XTL as identified patent offices, in writing each case relating to CUBIST by XTLsuch Redpoint Patents, including the Patent applications, and shall consider in good faith all comments from Redpoint relating to such filings and correspondence.
9.3.3 If IFF elects not to undertake (c) With respect to all filingsor after commencement of such filing, prosecution and and/or maintenance, desires to cease) the prosecution or the maintenance of any Patent pursuant to this Section 12.2Redpoint Patents consistent with its obligations set forth herein, the filing Party then IFF shall be responsible for payment notify Redpoint of all costs such election and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST Redpoint shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); howeverright, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instanceits sole discretion, to file, prosecute and/or maintain such Redpoint Patents at its sole cost and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLexpense.
Appears in 1 contract
Samples: License and Commercialization Agreement (Redpoint Bio CORP)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions Each Party agrees at its sole expense.
(b) XTL agrees to file, prosecute expense and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right it each determines appropriate to file, prosecute and maintain in the Territory, upon appropriate consultation with XTLthe other Party, Patents that claim or cover any Joint Invention (a “Joint Patent”); howeverrelating to the Program Information and Inventions owned in whole by such Party, in the event that CUBIST elects not to file any patent application in the Territory and, with respect to any Joint InventionARENA, XTL the inventions in the Arena Patents and Arena Know-How licensed to MERCK under this Agreement. With respect to Collaboration Patents, MERCK shall have file, prosecute, and maintain patent applications for such right Collaboration Patents and upon exercise by XTL ARENA shall cooperate fully and shall cause its employees to cooperate fully on the filing and prosecution of such rightPatents. MERCK shall be responsible for its internal costs and expenses incurred in filing, XTL shall prosecuting and maintaining patent applications for Collaboration Information and Inventions. MERCK, at its option, may choose to have the right to prosecute and maintain in the Territorymutually acceptable outside counsel prepare, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint applications for Patents on Collaboration Inventions. Each Party shall share equally the external costs and expenses, including patent office fees and fees of the private law firm or agents used to prepare, file, prosecute and maintain Collaboration Patents; provided, Arena’s cost shall not exceed ******************** dollars ($****************) in any country within given Calendar Year; and, provided further, that ARENA has no obligation to continue to share costs after the Territory Program Term unless MERCK is actively developing a Program Compound for which an IND has been filed. With respect to each Patent filed in accordance with this Section 7, the filing Party shall give the non-filing Party an opportunity to review the text of the application before filing, shall consult with the non-filing Party with respect thereto, and shall supply the non-filing Party with a timely basiscopy of the application as filed, together with notice of its filing date and serial number. CUBIST Each Party shall keep the other advised of the status of the actual and prospective Patent filings and upon the request of the other Party, provide advance copies of any papers related to the filing, prosecution and maintenance of such Patent filings. Each Party shall cooperate fully and shall cause its employees to cooperate fully, on the filing and prosecution of such Patents. Each Party shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST other of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLPatents for which the Party is responsible for the filing, prosecution and maintenance.
Appears in 1 contract
Samples: Research Collaboration and License Agreement (Arena Pharmaceuticals Inc)
Filing, Prosecution and Maintenance of Patents. (aA) CUBIST Idera agrees to prosecute and maintain in the Territory the Idera Background Patent Rights. Such prosecution shall be entitled at Idera's sole expense, discretion, and control. Idera agrees to file, prosecute and maintain in the Territory all Territory, upon appropriate consultation with Merck, the Idera Program Patent Rights licensed to Merck under this Agreement.
(B) With respect to Joint Information and Inventions, the Parties agree to select outside counsel acceptable to both Parties to file prosecute and maintain in the Territory, upon appropriate consultation with the Parties, patent applications and patents that claim any CUBIST with respect to Joint Information and Inventions. The costs, fees and expenses related to patent applications and patents for Joint Information and Inventions at its sole expenseshall be shared equally by Idera and Merck.
(bC) XTL agrees The Parties agree that whenever possible, Idera Oligonucleotide Inventions and Merck Materials Inventions shall be filed in separate patent applications.
(D) With respect to fileIdera Information and Inventions, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails Idera may elect not to file or prosecute any XTL Patent in any country in the Territoryand if so, CUBIST Idera shall promptly notify Merck and Merck shall have the rightright to file such patent applications. In such event, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL Idera shall execute such documents and perform such acts at Idera's expense as may be reasonably necessary to allow CUBIST effect an assignment of such Idera Program Patent Rights to file, prosecute and maintain such XTL Patent in such country Merck in a timely manner; provided that in any event any manner to allow Merck to continue such XTL Patents prosecution or maintenance. In each case, the filing Party shall always be registered in XTL’s name or in give the name non-filing Party an opportunity to review the text of the relevant licensor application before filing, shall consult with the non-filing Party with respect thereto, and shall supply the non-filing Party with a copy of XTL the application as identified in writing filed, together with notice of its filing date and serial number. The filing Party shall keep the non-filing Party advised of the status of the actual and prospective patent filings and, upon the non-filing Party's request, shall provide advance copies of any papers related to CUBIST by XTL.
(c) With respect to all filingsthe filing, prosecution and maintenance of such patent filings. The filing Party shall promptly give notice to the non-filing Party of the grant, lapse, revocation, surrender, invalidation or abandonment of any Patent pursuant Rights licensed to this the non-filing Party. Except as provided in Section 12.27.2(b), the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenanceall filings hereunder.
(dE) With respect to any Joint Inventions, CUBIST The Parties shall have consult on the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file prosecution of any patent application application(s) within the Idera Patent Rights which includes a claim(s) that covers a Selected Collaboration Compound as a composition of matter, method of manufacture or a method of use. As to such Idera Patent Rights, within [**] days of receipt by Idera, or Idera's prosecution counsel, of any United States or European patent office communication(s), Idera shall use reasonable efforts to provide to Merck a copy of the communication and a draft of a response thereto. Merck shall use reasonable efforts to promptly deliver comments on the communication and draft response to Idera, but in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBISTno event later than [**] days after receiving Idera's draft response. Thereafter, the Joint Patents Parties shall in good faith consult on Merck's comments and the drafting of the response to which such Joint Invention relatesthe patent office. Each of XTL and CUBIST shall execute such documents and perform such acts as The time periods in this Section 7.1(e) may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL extended by mutual agreement of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLParties.
Appears in 1 contract
Samples: Exclusive License and Research Collaboration Agreement (Idera Pharmaceuticals, Inc.)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled Dynavax agrees to file, prosecute and maintain in the Territory all patent applications Territory, in consultation with Merck, the Dynavax Patent Rights licensed to Merck under this Agreement; provided, however, that with respect to Joint Information and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees Inventions, the Parties agree to select outside counsel acceptable to both Parties to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST upon appropriate consultation with the Parties, patent applications and patents with respect to Joint Information and Inventions and such outside counsel will be instructed to keep both Parties informed of all matters, give both Parties appropriate time to review all filings and consider in good faith the comments of both Parties on all filings. The costs, fees and expenses related to patent applications and patents for Joint Information and Inventions shall be shared equally by Dynavax and Merck. If either party elects not to file a patent application on Joint Information and Inventions, it shall notify the other Party and the other Party shall have the rightright to file such patent applications. In such event, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL non-filing Party shall execute such documents and perform such acts at the non-filing Party’s expense as may be reasonably necessary to allow CUBIST effect an assignment of such Joint Information and Inventions to file, prosecute and maintain such XTL Patent in such country the other Party in a timely manner; provided that in any event any manner to allow the other Party to assume such XTL Patents shall always be registered in XTL’s name prosecution or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) maintenance. With respect to all filingsDynavax Information and Inventions and Dynavax Patent Rights, Dynavax may elect not to file and if so, Dynavax shall notify Merck and Merck shall have the right to file such patent applications. In such event, Dynavax shall execute such documents and perform such acts at Dynavax’s expense as may be reasonably necessary to effect an assignment of such Dynavax Patent Rights to Merck in a timely manner to allow Merck to continue such prosecution or maintenance. In each case, the filing Party shall give the non-filing Party an opportunity to review the text of the application before filing, shall consult with the non-filing Party with respect thereto, and shall supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number. Each Party shall keep the other Party advised of the status of the actual and prospective patent filings and upon request, shall provide advance copies of any papers related to the filing, prosecution and maintenance of such patent filings. Dynavax shall promptly give notice to Merck of the grant, lapse, revocation, surrender, invalidation or abandonment of any Dynavax Patent pursuant Rights licensed to this Section 12.2Merck for which Dynavax is responsible for the filing, prosecution and maintenance. With respect to all filings hereunder, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution filings. Any patents or maintenance.
(d) With respect to any Joint Inventions, CUBIST patent applications assigned hereunder shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any be considered patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL rights of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLParty executing such assignment.
Appears in 1 contract
Samples: Exclusive License and Development Collaboration Agreement (Dynavax Technologies Corp)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST Seller shall have the first right to file, prosecute and maintain each of the Patents included in the Licensed Intellectual Property in the Territory, upon appropriate consultation with XTLBuyer. Seller shall consider in good faith any comments from Buyer regarding the filing, prosecution and maintenance of Patents included in the Licensed Intellectual Property that claim contain one or cover more claims that cover, either specifically or generically, the Purchased Compound and/or methods of making or using the same. If Seller elects to file, prosecute or maintain any Joint Invention such Patent included in the Licensed Intellectual Property, Seller shall do so in good faith. For the avoidance of doubt, Seller shall use commercially reasonable efforts, subject to the patent laws in the jurisdiction at issue, to maintain the pendency of at least one application for each of the patent families included in the Licensed Intellectual Property on a country-by-country basis or use commercially reasonable efforts to promptly (and in any event not less than sixty (60) days before any applicable deadline for any filing necessary to prevent any abandonment of such Patent) notify Buyer of Seller’s intention to no longer maintain such pendency, after which Buyer shall have the right, to the extent permitted by law, to maintain such pendency, including by the filing of one or more continuation or divisional applications, and continue prosecution of such family at Buyer’s discretion. Seller shall also give prompt notice (and in any event not less than sixty (60) days before any applicable deadline for any filing necessary to prevent any abandonment of such Patent) to Buyer of any desire to cease prosecution and/or maintenance of any Patents included in the Licensed Intellectual Property on a “Joint Patent”); howevercountry-by-country basis in the Territory and, in such case, shall permit Buyer, in Buyer’s sole discretion, to continue prosecution or maintenance of such Patents included in the event that CUBIST Licensed Intellectual Property at Buyer’s own expense. If Buyer elects to continue prosecution or maintenance based on Seller’s election not to file any patent application pursuant to this Section 3.04(b), Buyer shall do so in the Territory with respect to any Joint Inventiongood faith, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST Seller shall execute such documents and perform such acts at Seller’s expense as may be reasonably necessary to allow CUBISTpermit Buyer to continue such prosecution or maintenance. Buyer may, at its discretion, seek input from Seller, including technical information and assistance, in the first instanceprosecution or maintenance of the patent applications or patents, and XTL, Seller shall provide such input as it is reasonably able to provide in a timely manner and at its own expense. If Buyer elects to prosecute any such Patents included in the second instanceLicensed Intellectual Property, Buyer shall file all necessary amendments to expressly limit the claims in such Patents to the Purchased Compound and/or methods of making or using the same. Buyer shall have the first right to file, prosecute and maintain Joint each of the Patents included in the Purchased Intellectual Property in the Territory; provided, however, that Buyer shall not abandon any such Purchased Intellectual Property without first giving Seller the opportunity to file, prosecute or maintain the applicable Patent as provided below. If Buyer elects to file, prosecute or maintain any such Patent included in the Purchased Intellectual Property, Buyer shall do so in good faith. Buyer may elect not to file, prosecute or maintain any such Patent included in the Purchased Intellectual Property, and, if so, Buyer shall promptly (and in any event not less than sixty (60) days before any applicable deadline for any filing necessary to prevent any abandonment of such patent), notify Seller, and Seller shall have the right to file, prosecute or maintain any such Patent included in the Purchased Intellectual Property in which case, if Seller elects to prosecute or maintain any such Patent included in the Purchased Intellectual Property, Seller shall do so in good faith. For the avoidance of doubt, Buyer shall use commercially reasonable efforts, subject to the patent laws in the jurisdiction at issue, to maintain the pendency of at least one application for each of the patent families included in the Purchased Intellectual Property on a country-by-country within basis, or use commercially reasonable efforts to promptly (and in any event not less than sixty (60) days before any applicable deadline for any filing necessary to prevent any abandonment of such Patent) notify Seller of Buyer’s intention to no longer maintain such pendency, after which Seller shall have the Territory in a timely basisright, to the extent permitted by law, to maintain such pendency, including by the filing of one or more continuation or divisional applications. CUBIST Buyer shall promptly give notice to XTL Seller of any desire to cease prosecution and/or maintenance of the grant, lapse, revocation, surrender, invalidation or abandonment applicable Patents included in the Purchased Intellectual Property on a country-by- country basis in the Territory and, in such case, shall permit Seller to continue prosecution or maintenance of such Patents included in the Purchased Intellectual Property at Seller’s own expense. If Seller elects to continue prosecution or maintenance based on Buyer’s election not to do so pursuant to this Section 3.04(b), Buyer shall execute such documents and perform such acts at Buyer’s expense as may be reasonably necessary to permit Seller to continue such prosecution or maintenance. Notwithstanding the foregoing, Seller shall only have the right to prosecute Purchased Intellectual Property whose claims do not specifically cover the Purchased Compound and/or methods of making or using the same. If Seller elects to prosecute any Joint Purchased Intellectual Property which are not so expressly limited, Seller shall file all necessary amendments so that the claims do not specifically cover the Purchased Compound and methods of making or using the same. If Seller elects to file, prosecute or maintain Patents included in the Purchased Intellectual Property based on Buyer’s election not to do so pursuant to this Section 3.04(b) and such Patents include or are amended to include claims that generically cover the Purchased Compound and/or methods of making or using the same, Seller shall consider any comments from Buyer regarding the filing, prosecution and maintenance of such Patents in good faith. Unless expressly stated otherwise in Sections 3.04(a) or 3.04(b), the Party conducting the prosecution regarding a Patent being prosecuted by CUBIST. XTL included in the Purchased Intellectual Property or Licensed Intellectual Property shall promptly give notice to CUBIST bear the expense of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLsuch prosecution.
Appears in 1 contract
Filing, Prosecution and Maintenance of Patents. (a) CUBIST From the Effective Date, Lilly shall be entitled responsible for, and shall use commercially reasonable efforts in, the preparation, filing, prosecution and maintenance of all Prosidion Patents and all Lilly Patents (including all Patent Expenses relating thereto). Prosidion agrees to filecooperate fully with Lilly, prosecute its attorneys, and maintain agents, at Lilly’s expense, in the Territory preparation, filing, prosecution and maintenance related to the Prosidion Patents and, upon request, to provide Lilly with complete copies of any and all documents or other materials that Lxxxx xxxxx necessary to undertake such responsibilities. Lilly shall consider in good faith the requests and suggestions of Prosidion with respect to strategies for filing and prosecuting Prosidion Patents for which it has responsibility hereunder. Lilly shall keep Prosidion informed of progress with regard to the preparation, filing, prosecution and maintenance of the Prosidion Patents. Before taking any material step in the filing, prosecution or maintenance of such Patents, Lilly shall allow Prosidion to comment on the action proposed to be taken, at Prosidion’s expense, and Lilly shall take into account any comments and suggestions of Prosidion, provided that any such advice by Prosidion is given without any warranty or guarantee as to the results. Lilly shall provide Prosidion with copies of all relevant documents and correspondence with any patent applications office, including but not limited to, relevant applications, official letters, final responses to official letters, notice of all interferences, reissues, re-examinations, oppositions or requests for patent term extensions and patents any other documents which may be of importance for any action(s) to be taken, prior to filing and sufficiently in time prior to the deadline for, or the intended date for, the action to be taken, whichever is the earlier, but no later than (60) days prior to such date, provided that claim such period is available to Lilly. Prosidion shall communicate its comments on the same to Lilly within thirty (30) days from the date on which Lilly provided such information to Prosidion or such shorter period as is required to enable Lilly to comply with any CUBIST Inventions at its sole expenserelevant deadline.
(b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwillingLilly desires to abandon any Prosidion Patent (whether by any action or inaction), unable or otherwise fails Lilly shall provide reasonable prior written notice to file or prosecute any XTL Patent Prosidion of such intention to abandon (which notice shall, in any country in event, be given no later than thirty (30) days prior to the Territory, CUBIST next deadline for any action that may be taken with respect to such Prosidion Patent with the applicable patent office) and Prosidion shall have the right, but not the obligation, to assume responsibility for the prosecution and XTL shall provide CUBIST with thirty (30) days written notice maintenance thereof at Prosidion’s expense. If Prosidion does elect to permit CUBIST toassume such responsibility, file, prosecute and/or maintain such XTL Patent in such country, and XTL Lilly shall execute such and deliver any relevant documents and perform such acts as may be reasonably necessary to allow CUBIST aid or permit Prosidion to file, prosecute and maintain take such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTLresponsibility.
(c) With respect Prosidion hereby grants Lilly’s in-house patent counsel a limited conflict waiver, to all filingsthe limited extent of any conflict of interest arising from the fact that:
(i) Lilly has the right to control the preparation, filing, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs Prosidion Patent; and expenses related to such Patent filing, prosecution or maintenance.
(dii) With respect to any Joint Inventions, CUBIST shall have Prosidion is the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL owner of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLProsidion Patents.
Appears in 1 contract
Samples: Exclusive License Agreement (Osi Pharmaceuticals Inc)
Filing, Prosecution and Maintenance of Patents. 7.1.1 (a) CUBIST shall be entitled MERCK has obtained an exclusive license; or (b) MERCK directs ZNOMICS in writing to file a patent application, ZNOMICS agrees to file, prosecute and maintain in Major Market Countries, or other countries upon the Territory all patent applications mutual written agreement of the Parties, at MERCK's reasonable cost and patents that claim any CUBIST Inventions at its sole expense.
expense and upon appropriate consultation with MERCK, the Patent Rights under this Agreement (b) XTL agrees to file, prosecute and maintain the XTL Patents at its sole expense, "Funded Patent Rights"); provided, however, that XTL shall (i) use outside counsel reasonably acceptable with respect to CUBISTJoint Information and Inventions, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST MERCK shall have the rightfirst right to file patent applications. With respect to ZNOMICS Information and Inventions that are not Funded Patent Rights, but ZNOMICS may elect not to file and if so, * Certain portions of this exhibit have been omitted pursuant to a request for confidential treatment and those portions have been filed separately with the obligationSecurities and Exchange Commission. ZNOMICS shall notify MERCK and MERCK shall have the right to file such patent applications. In such event, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL ZNOMICS shall execute such documents and perform such acts at ZNOMICS's expense as may be reasonably necessary to allow CUBIST effect an assignment of such Patent Rights to file, prosecute and maintain such XTL Patent in such country MERCK in a timely manner; provided that in any event any manner to allow MERCK to continue such XTL Patents prosecution or maintenance. In each case, the filing Party shall always be registered in XTL’s name or in give the name non-filing Party an opportunity to review the text of the relevant licensor application before filing, shall consult with the non-filing Party with respect thereto, and shall supply the non-filing Party with a copy of XTL the application as identified in writing filed, together with notice of its filing date and serial number. ZNOMICS shall keep MERCK advised of the status of the actual and prospective patent filings and, upon MERCK's request, shall provide advance copies of any papers related to CUBIST by XTL.
(c) With respect to all filingsthe filing, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL, Patents that claim or cover any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST, the Joint Patents to which such Joint Invention relatesfilings. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST ZNOMICS shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST MERCK of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Funded Patent being prosecuted Rights for which ZNOMICS is responsible for the filing, prosecution and maintenance.
7.1.2 that MERCK has licensed on a non-exclusive basis, MERCK shall not be required to reimburse ZNOMICS for the preparation, filing, prosecution and maintenance of such Patent Rights unless MERCK elects to exercise its Exclusive Option for * or unless MERCK direct ZNOMICS in writing to file a patent application, in which case the provisions of Section 7.1.1 shall apply.
7.1.3 MERCK shall cease payment for the preparation, filing, prosecution and maintenance of Funded Patent Rights upon expiration or termination of (a) the corresponding exclusive license for *; or (b) the corresponding non-exclusive license regarding which MERCK has directed ZNOMICS to file patent protection.
7.1.4 Upon the granting of a non-exclusive license for Funded Patent Rights by XTLZNOMICS to a Third Party, ZNOMICS shall reimburse MERCK the pm-rata share of the preparation, filing, prosecution and maintenance of such Funded Patent Rights.
7.1.5 MERCK, at its sale discretion, may, upon reasonable advance notice to ZNOMICS, cease payment for the preparation, filing, prosecution and maintenance of Funded Patent Rights for * that MERCK has not licensed on an exclusive basis. In such event, ZNOMICS shall have the right to continue the preparation, filing, prosecution and maintenance of Funded Patent Rights at its own cost and expense, or to discontinue such activities.
Appears in 1 contract
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL Inventions. BIOCHEMIE agrees to file, prosecute and maintain in [*] and, to the XTL Patents extent included [*] , upon appropriate consultation with CUBIST, the BIOCHEMIE Patents. Except to the extent otherwise provided pursuant to the next sentence, BIOCHEMIE may, at its sole expensediscretion, providedchoose to file, howeverprosecute and maintain the BIOCHEMIE Patents in [*] upon appropriate consultation with CUBIST. BIOCHEMIE shall also file, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation prosecute and correspondence from, sent to or filed with patent offices maintain the BIOCHEMIE Patents in any country in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST[*]. In the event that XTL BIOCHEMIE is unwilling, unable or otherwise fails to file or prosecute any XTL Patent BIOCHEMIE Patents in any country in the TerritoryTerritory [*], then CUBIST shall have such right and, upon exercise of such right by CUBIST, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice be entitled to permit CUBIST to, file, prosecute and/or and maintain such XTL Patent BIOCHEMIE Patents in such country, and XTL BIOCHEMIE shall execute such documents and perform such acts [*] as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent [*] in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST . [*] shall have the first right to file, prosecute and maintain in the Territory, upon appropriate consultation with XTL[*], Patents that claim or cover any Joint Invention (a “Joint Patent”)Patents; however, in the event that CUBIST [*] elects not to file any patent application in the Territory with respect to any Joint Invention, XTL [*] shall have such right and upon exercise by XTL [*] of such right, XTL [*] shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBIST[*], the Joint Patents to which such Joint Invention relates. Each of XTL BIOCHEMIE and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST[*], in the first instance, and XTL[*], in the second instance, to file, prosecute and maintain Joint Patents in any country within the Territory in a timely basis. CUBIST In each case, the filing Party shall give the non-filing Party an [*] before filing (but in no event less than [*] days), shall [*] with the non-filing Party with respect thereto, shall, prior to filing any application, [*] that the non-filing Party [*] on a timely basis to such application and shall supply the non-filing Party with a copy of the application as filed, together with notice of its filing date and serial number and all substantive prosecution. Each Party shall keep the other advised of the status of the actual and prospective patent filings described above in this Section 8.2 and, upon the request of the other, [*] related to the filing, prosecution and maintenance of such patent filings. [*] shall promptly give notice to XTL [*] of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST[*]. XTL [*] shall promptly give notice to CUBIST [*] of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent [*] or [*] being prosecuted by XTL[*]. With respect to all filings hereunder, the filing Party shall be responsible for payment of all costs and expenses related to such filings.
Appears in 1 contract
Filing, Prosecution and Maintenance of Patents. (a) CUBIST Cephalon shall be entitled to file, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL agrees to file, prosecute own expense and maintain the XTL Patents at as it determines in its sole expensediscretion appropriate to prepare, provided, however, that XTL shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST with all material documentation and correspondence from, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable opportunity to review and comment upon all filings with such patent offices in advance of submissions to such patent offices, and (iv) shall consider, in good faith, incorporating any comments provided by CUBIST. In the event that XTL is unwilling, unable or otherwise fails to file or prosecute any XTL Patent in any country in the Territory, CUBIST shall have the right, but not the obligation, and XTL shall provide CUBIST with thirty (30) days written notice to permit CUBIST to, file, prosecute and/or maintain such XTL Patent in such country, and XTL shall execute such documents and perform such acts as may be reasonably necessary to allow CUBIST to file, prosecute and maintain such XTL Patent in such country in a timely manner; provided that in any event any such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect to any Joint Inventions, CUBIST shall have the first right to file, prosecute and maintain in the Territory, Patents relating to Cephalon IP and Cephalon Program IP (collectively, “Cephalon Patents”), and upon appropriate consultation with XTLChampions, Patents that claim or cover any relating to Joint Invention Program IP (a collectively, “Joint PatentProgram Patents”); however.
(b) Champions shall at its own expense and as it determines appropriate to prepare, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Inventionfile, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territory, upon appropriate consultation with CUBISTPatents relating to Champions IP and Champions Program IP (collectively, “Champions Patents”).
(c) Each Party shall be responsible for its internal and external costs and expenses, including patent office fees and fees of the Joint Patents private law firm or agents used to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBISTprepare, in the first instance, and XTL, in the second instance, to file, prosecute and maintain Joint Patents. For clarity, if any Patent(s) are assigned to a Party hereunder, the assignee Party shall be responsible for all ongoing costs and expenses relating to such Patent(s) as of the date of assignment.
(d) With respect to all Program Patents filed in accordance with this Article VIII, Cephalon shall give Champions an opportunity to review the text of the application and an opportunity to request amendments to the text of the application prior to filing. With respect to all Program Patents filed in accordance with this Article VIII, upon written request by Champions, Cephalon shall supply Champions with a copy of the application as filed, together with notice of its filing date and serial number.
(e) With respect to all Program Patents filed in accordance with this Article VIII, Cephalon shall keep Champions advised of the status of the actual and prospective Patent filings. Cephalon shall take any comments or requests of Champions related to the filing, prosecution and maintenance of such Patents into good faith consideration so long as such comments or requests are provided in writing and received by Cephalon reasonably prior to the time at which Cephalon expects to take action with respect to any such Patent.
(f) With respect to each Patent filed in accordance with this Article VIII, each Party shall reasonably cooperate and shall cause its employees to reasonably cooperate, upon request, in promptly executing any and all patent applications, or other instruments necessary or useful by either or both Parties in connection with the application, in the filing, prosecution, or maintenance of such Patents in any country within the Territory in a timely basis. CUBIST shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint Patent being prosecuted by XTLTerritory.
Appears in 1 contract
Samples: Research and Collaboration Agreement (Champions Oncology, Inc.)
Filing, Prosecution and Maintenance of Patents. (a) CUBIST shall be entitled Subject to fileSection 6.1(b) below, prosecute and maintain in the Territory all patent applications and patents that claim any CUBIST Inventions at its sole expense.
(b) XTL CELL GENESYS agrees to file, prosecute and maintain the XTL Patents at its sole expense, provided, however, that XTL all Patent Rights [**] and shall (i) use outside counsel reasonably acceptable to CUBIST, (ii) provide CUBIST TKT with copies of all material documentation and correspondence fromrelated to the Patent Rights. To the extent that such documents pertain to Licensed Products, sent to or filed with patent offices in the Territory regarding any XTL Patent, (iii) provide CUBIST with a reasonable CELL GENESYS shall give TKT an opportunity to review and comment upon all filings with such patent offices in advance of submissions on any official communication related to such patent officesthe Patent Rights before filing, shall [**], and (iv) shall consider, consult with TKT thereon. CELL GENESYS shall comply with any applicable duty to disclose information relevant to the Patent Rights as required by the United States Patent and Trademark Office during the prosecution of any of the Patent Rights. CELL GENESYS shall consult with TKT and consider in good faith, incorporating any faith TKT's comments provided by CUBIST. related to the scope of appropriate disclosure.
(b) In the event that XTL is unwillingCELL GENESYS elects not to file, unable prosecute or otherwise fails to file maintain any patent or prosecute any XTL Patent in any country patent application involving a particular patent or application in the TerritoryPatent Rights, CUBIST then CELL GENESYS shall give TKT at least [**] notice thereof and TKT shall have the rightright to elect to undertake such prosecution and maintenance. In such case, but not the obligationCELL GENESYS shall, [**], either (i) assign such patent or application (including any patent or application to which such patent or application claims priority) to TKT, or (ii) allow TKT to prosecute and maintain such patent in CELL GENESYS's name, and XTL shall provide CUBIST with thirty grant TKT an exclusive (30) days written notice subject to permit CUBIST tothe following), worldwide, sublicensable license thereto in all fields. TKT shall, [**], file, prosecute and/or and maintain such XTL patent or application (including any priority patent or patent application) in the Patent in such country, and XTL Rights. CELL GENESYS shall execute such documents and perform such acts as may be reasonably necessary to effect an assignment or transfer of power of attorney to such Patent Rights to allow CUBIST TKT to file, prosecute and maintain such XTL Patent in such country continue in a timely manner; provided that in any event any manner such XTL Patents shall always be registered in XTL’s name or in the name of the relevant licensor of XTL as identified in writing to CUBIST by XTL.
(c) With respect to all filings, prosecution and maintenance of any Patent pursuant to this Section 12.2, the filing Party shall be responsible for payment of all costs and expenses related to such Patent filing, prosecution or maintenance.
(d) With respect . Upon completion of such assignment or transfer of power of attorney, TKT shall be deemed automatically to have granted CELL GENESYS a worldwide, fully paid, non-sublicensable and nonexclusive license under such assigned Patent Rights [**]. Further, TKT agrees that it shall, upon CELL GENESYS's request, negotiate in good faith with any Joint Inventions, CUBIST shall have Third Party to grant a license on commercially reasonable terms under such Patent Right to the first right extent needed for such Third Party to practice license rights granted to it by CELL GENESYS under the Patent Rights prior to CELL GENESYS's election not to file, prosecute and or maintain in the Territorysuch Patent Right, upon appropriate consultation with XTL, Patents provided that claim or cover (a) such license rights do not include any Joint Invention (a “Joint Patent”); however, in the event that CUBIST elects not to file any patent application in the Territory with respect to any Joint Invention, XTL shall have such right and upon exercise by XTL of such right, XTL shall have the right to prosecute and maintain in the Territorymake, upon appropriate consultation with CUBISThave made, the Joint Patents to which such Joint Invention relates. Each of XTL and CUBIST shall execute such documents and perform such acts as may be reasonably necessary to allow CUBISTuse, in the first instancesell, offer for sale or import any Licensed Products, and XTL(b) such Third Party is not, in as of the second instance, date such election is made by CELL GENESYS not to file, prosecute and or maintain Joint Patents in any country within the Territory in a timely basissuch Patent Right, [**]. CUBIST CELL GENESYS shall promptly give notice to XTL of the grant, lapse, revocation, surrender, invalidation or abandonment TKT as soon as practicable in the Territory of any Joint Patent being prosecuted by CUBIST. XTL shall promptly give notice to CUBIST advance of the grant, lapse, revocation, surrender, invalidation or abandonment of any Joint CELL GENESYS Patent Right being prosecuted by XTLCELL GENESYS.
Appears in 1 contract