Foreign Patent Prosecution Clause Samples

Foreign Patent Prosecution. With respect to any non-U.S. territory in which it proposes to file a patent application, PRF shall notify LICENSEE ninety (90) days before the applicable national phase filing deadline. Subject to LICENSEE’s compliance with Section 7.2, PRF shall file and prosecute a patent application in any country regarding which it receives written notice from LICENSEE requesting such filing; provided, however, that: (i) the written notice is received at least sixty (60) days before the applicable national phase filing deadline; and (ii) LICENSEE is not in default of any of its obligations under this Agreement as of the date written notice is received by PRF.

Foreign Patent Prosecution. With respect to any non-U.S. territory [***].

Foreign Patent Prosecution. 6.2.1 If Company gives at least [**] days prior written notice to UMB, Company may elect to discontinue support for Patent Expenses with respect to any particular Patent Right, but UMB’s written consent shall be required prior to discontinuing support for Patent Expenses in the United States, Japan, Australia, Canada, United Kingdom, France, Germany or Spain. Company shall be responsible for reasonable Patent Expenses incurred in that [**] day period with respect to the county or countries where the Company is ceasing support. From and after UMB’s receipt of Company’s notice, Company’s rights in Patent Rights will terminate with respect to the country or countries where Company is ceasing support, and Company shall execute such documents as reasonably may be requested by UMB to confirm termination of Company’s rights. 6.2.2 UMB may elect to file and prosecute patent applications, solely at its own expense, in foreign countries where Company has declined or failed to pay Patent Expenses for such patent applications. If UMB so elects, in those countries, Company will have no input into patenting decisions, no license rights with respect to those Patent Rights, and no Option rights with respect to related Improvements. 5. Section 6.3 of the MLA is hereby deleted in its entirety, and replaced with the following:

Foreign Patent Prosecution. If Licensee will not pursue patents in a foreign country where patent protection may be available, Licensee shall notify the University thirty (30) days prior to any patent prosecution bar date in that country so that University may prosecute patents in that country if University so desires. If University pursues such foreign patent protection, then from that time forward all such patent applications and any patents arising therefrom shall not be considered Licensed Patents under this Agreement and Licensee shall forfeit any and all rights under this Agreement to such patent applications and any patents arising therefrom. University shall be responsible for all costs associated with those patent applications and patents it decides to pursue and maintain.

Foreign Patent Prosecution. FHS shall file Patent Applications in the foreign countries that may be designated in writing by CYBX to FHS on a timely basis, and CYBX shall be permitted to consult with FHS in the selection of foreign patent counsel and in the preparation and prosecution of the foreign Patent Applications.

Foreign Patent Prosecution. 6.2.1 UMB shall prepare and file patent applications for Patent Rights in Japan, Australia, Canada, the European States, and in those additional countries which are specified by Company in accordance with this Section. No later than [**] days before the applicable national phase filing deadline Company shall specify in writing to UMB the additional foreign countries in which patent applications for Patent Rights are to be filed and prosecuted. 6.2.2 UMB may elect to file and prosecute patent applications, at its own expense, in any foreign country not specified under Section 6.2.1, or as to which Company has declined or failed to pay Patent Expenses. If UMB so elects, as to any such country Company shall have: no right to give input into patenting strategy or decisions; no license rights with respect to Patent Rights; and no Option rights with respect to Improvements. 6.2.3 Upon at least [**] days prior written notice to UMB, Company may elect to discontinue payment of Patent Expenses in any country, provided however that Company shall consult with UMB regarding the election to discontinue payment of Patent Expenses with respect to any particular Patent Right in the U.S., Japan, Australia, Canada, U.K., France, Germany and Spain but in no event shall Company, without the consent of UMB, elect to discontinue payment of Patent Expenses with respect to all Patent Rights in the U.S., Japan, Australia, Canada, U.K., France, Germany or Spain. Company shall be responsible for reasonable Patent Expenses incurred during the [**] day period with respect to the country or countries where Company is discontinuing payments. At the end of the [**] day period, Company’s rights in Patent Rights shall terminate with respect to the country or countries, and Company shall execute documents as reasonably may be requested by UMB to confirm termination of Company’s rights.