Common use of Invention Disclosure, Election of Title, and Filing of Patent Application Clause in Contracts

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 18 contracts

Samples: Technology Investment Agreement, Technology Investment Agreement, Technology Investment Agreement

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Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention Invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 10 contracts

Samples: Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 10 contracts

Samples: Other Transaction for Prototypes, Other Transaction for Prototypes, Other Transaction Agreement for Prototypes

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 8 contracts

Samples: Other Transaction for Research, Other Transaction Agreement for Research, Technology Investment Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VIIthis Article, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 8 contracts

Samples: Research and Development, Other Transaction Agreement, Other Transaction for Research

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention Invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VIIthis Article, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 5 contracts

Samples: Other Transaction for Prototypes, Other Transaction for Prototypes, Other Transaction for Prototypes

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 5 contracts

Samples: Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company Performer’s personnel responsible for patent mattersmatters or, in the case of no internal writing from the inventor, within two (2) months after Performer files a provisional application for it; provided however, that in the event the Performer does not file a provisional application, Performer shall disclose the Subject Invention to the Government within two (2) months of determining that a particular set of experiments and or data qualify as a Subject Invention. The disclosure to DARPA the Government shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made Made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Subject Invention. The disclosure shall also identify any publication, sale, or public use of the invention Subject Invention and whether a manuscript describing the invention Subject Invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. The Performer shall also submit to the Government an annual listing of Subject Inventions. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPAthe Government, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either either: (i) ten (10) months of the corresponding initial patent application application; or (ii) six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, applications where such filing has been prohibited by a Secrecy Ordersecrecy order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure disclosure, election, and filing under Article VII, may be granted paragraph B, may, at the discretion of DARPA’s discretion , and after considering the circumstances position of the Performer and the overall effect of the extensionPerformer, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 5 contracts

Samples: Technology Investment Agreement (Amyris, Inc.), Technology Investment Agreement (Amyris, Inc.), Technology Investment Agreement (Amyris, Inc.)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention Invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions Subject Inventions identified during the course of the Agreement and the current status of each.

Appears in 5 contracts

Samples: Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention Invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 4 contracts

Samples: Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer Consortium shall disclose each subject invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer Consortium determines that it does not intend to retain title to any such Invention, the Performer Consortium shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer Consortium shall file its initial patent application on a subject invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer Consortium may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer Consortium shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer Consortium and the overall effect of the extension. 6. The Performer Consortium shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer Consortium shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 4 contracts

Samples: Technology Investment Agreement, Technology Investment Agreement, Technology Investment Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent mattersmatters or, in the case of no internal writing from the inventor, within two (2) months after filing a provisional application, provided however that in the event the Performer does not file a provisional application, it shall disclose the Subject Invention to DARPA within two (2) months of determining that a particular set of experiments and or data qualify as a Subject Invention. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. The Performer shall also submit to DARPA an annual listing of Subject Inventions. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted paragraph C, may, at the discretion of DARPA’s discretion , and after considering the circumstances position of the Performer and the overall effect of the extensionPerformer, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 3 contracts

Samples: Technology Investment Agreement (Amyris, Inc.), Technology Investment Agreement (Amyris, Inc.), Technology Investment Agreement (Amyris, Inc.)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention Invention and whether a manuscript describing the invention Invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 3 contracts

Samples: Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. (1. ) The Performer PAH shall disclose each subject invention Subject Invention to DARPA the CMF within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA the CMF shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, biological or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. (2. ) If the Performer PAH determines that it does not intend to retain title to any such Inventioninvention, the Performer PAH shall notify DARPAthe CMF, in writing, within eight nine (8) 9) months of disclosure to DARPAdisclosure. However, in any case where publication, sale, sale or public use has initiated the one (1)-year 1) year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA the ACC-NJ through CMF to a date that is no more than sixty six (606) calendar days months prior to the end of the statutory periodproject. (3. ) The Performer PAH shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer MCDC PAH may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. (4. The Performer shall notify DARPA of any decisions not to continue ) After considering the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration position of the response period required by CMF on behalf of the relevant patent office. 5. Requests PAH, a request for extension of the time for disclosure election, and filing under this Article VIIIX, paragraph C, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extensionapproved by ACC-NJ, which ACC-NJ approval shall not be unreasonably withheld. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 3 contracts

Samples: Base Agreement, Base Agreement, Base Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer Consortium shall disclose each subject invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer Consortium determines that it does not intend to retain title to any such Invention, the Performer Consortium shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer Consortium shall file its initial patent application on a subject invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer Consortium may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer Consortium shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VIIthis Article, may be granted at DARPA’s discretion after considering the circumstances of the Performer Consortium and the overall effect of the extension. 6. The Performer Consortium shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer Consortium shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 2 contracts

Samples: Other Transaction for Research, Other Transaction Agreement for Research

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer Recipient shall disclose each subject invention Subject Invention to DARPA NIH within four (4) months after the inventor discloses it in writing to his their company personnel responsible for patent matters. The disclosure to DARPA NIH shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention Invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer Recipient determines that it does not intend to retain title to any such Invention, the Performer Recipient shall notify DARPANIH, in writing, writing within eight six (8) 6) months of disclosure to DARPAdisclosure. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA NIH to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer Recipient shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer Recipient may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer Recipient shall notify DARPA NIH of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPANIH’s discretion after considering the circumstances of the Performer Recipient and the overall effect of the extension. 6. The Performer Recipient shall submit to DARPA NIH annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer Recipient shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 2 contracts

Samples: Other Transactions Agreement, Other Transactions Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention Invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VIIthis Article, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions Subject Inventions identified during the course of the Agreement and the current status of each.

Appears in 2 contracts

Samples: Other Transaction for Prototypes, Other Transaction Agreement for Prototypes

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention Invention and whether a manuscript describing the invention Invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VIIthis Article, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 2 contracts

Samples: Other Transaction for Prototypes, Other Transaction Agreement for Prototypes

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 2 contracts

Samples: Other Transaction for Prototype Agreement, Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention Subject Invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions Subject Inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Technology Investment Agreement (Andretti Acquisition Corp.)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent mattersmatters or, in the case of no internal writing from the inventor, within two (2) months after filing a provisional application, provided however that in the event the Performer does not file a provisional application, it shall disclose the Subject Invention to DARPA within two (2) months of determining that a particular set of experiments and or data qualify as a Subject Invention. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. The Performer shall also submit to DARPA an annual listing of Subject Inventions. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the Enclosure 1 Conformed Copy P00012 corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted paragraph C, may, at the discretion of DARPA’s discretion , and after considering the circumstances position of the Performer and the overall effect of the extensionPerformer, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Technology Investment Agreement (Amyris, Inc.)

Invention Disclosure, Election of Title, and Filing of Patent Application. (1. ) The Performer PAH shall disclose each subject invention Subject Invention to DARPA the CMF within four (4) months [* * *] after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA the CMF shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, biological or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. (2. ) If the Performer PAH determines that it does not intend to retain title to any such Inventioninvention, the Performer PAH shall notify DARPAthe CMF, in writing, within eight (8) months [* * *] of disclosure to DARPAdisclosure. However, in any case where publication, sale, sale or public use has initiated the one (1)-year 1) year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA the ACC-NJ through CMF to a date that is no more than sixty (60) calendar days [* * *] prior to the end of the statutory periodproject. (3. ) The Performer PAH shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year [* * *] after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer MCDC PAH may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months [* * *] of the corresponding initial patent application or six (6) months [* * *] from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. (4. The Performer shall notify DARPA of any decisions not to continue ) After considering the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration position of the response period required by CMF on behalf of the relevant patent office. 5. Requests PAH, a request for extension of the time for disclosure election, and filing under this Article VIIIX, paragraph C, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extensionapproved by ACC-NJ, which ACC-NJ approval shall not be unreasonably withheld. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Base Agreement (Regeneron Pharmaceuticals, Inc.)

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Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer Recipient shall disclose each subject invention Subject Invention to DARPA DHHS within four (4) months after the inventor discloses it in writing to his his/her company personnel responsible for patent matters. The disclosure to DARPA DHHS shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Subject Invention. The disclosure shall also identify any publication, sale, or public use of the invention Subject Invention and whether a manuscript describing the invention Subject Invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. Recipient shall also submit to DHHS an annual listing of Subject Inventions. 2. If the Performer Recipient determines that it does not intend to retain title to any such Subject Invention, the Performer Recipient shall notify DARPADHHS, in writing, within eight two (8) months 2) years of disclosure to DARPADHHS. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA DHHS to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer Recipient shall file its initial patent application on a subject invention to which it elects to retain title Subject Invention within one (1) year after election the end of title the period set forth in Article XI.B.2 above or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public useuse (if earlier). The Performer Recipient may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure electiondisclosure, notice, and filing under this Article VIIXI.B may, may be granted at DARPA’s the discretion of DHHS, and after considering the circumstances position of the Performer and the overall effect of the extensionRecipient, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Other Transaction Agreement (Medicines Co /De)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention to DARPA within four two (42) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Other Transaction for Research

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA Northrop Grumman within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA Northrop Grumman shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Subject Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention Invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPANorthrop Grumman, in writing, within eight (8) months of disclosure to DARPANorthrop Grumman. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA SDA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA Northrop Grumman of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPASDA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA Northrop Grumman annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions Subject Inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Other Transaction Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent mattersmatters or, in the case of no internal writing from the inventor, within two (2) months after filing a provisional application, provided however that in the event the Performer does not file a provisional application, it shall disclose the Subject Invention to DARPA within two (2) months of determining that a particular set of experiments and or data qualify as a Subject Invention. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. The Performer shall also submit to DARPA an annual listing of Subject Inventions. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted Enclosure 1 Conformed Copy P00009 paragraph C, may, at the discretion of DARPA’s discretion , and after considering the circumstances position of the Performer and the overall effect of the extensionPerformer, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Technology Investment Agreement (Amyris, Inc.)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent mattersmatters or, in the case of no internal writing from the inventor, within two (2) months after filing a provisional application, provided however that in the event the Performer does not file a provisional application, it shall disclose the Subject Invention to DARPA within two (2) months of determining that a particular set of experiments and or data qualify as a Subject Invention. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. The Performer shall also submit to DARPA an annual listing of Subject Inventions. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the 14 of 23 Enclosure 1 Conformed Copy P00010 Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted paragraph C, may, at the discretion of DARPA’s discretion , and after considering the circumstances position of the Performer and the overall effect of the extensionPerformer, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Technology Investment Agreement (Amyris, Inc.)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent mattersmatters or, in the case of no internal writing from the inventor, within two (2) months after filing a provisional application, provided however that in the event the Performer does not file a provisional application, it shall disclose the Subject Invention to DARPA within two (2) months of determining that a particular set of experiments and or data qualify as a Subject Invention. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. The Performer shall also submit to DARPA an annual listing of Subject Inventions. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted Enclosure 1 Conformed Copy P00008 paragraph C, may, at the discretion of DARPA’s discretion , and after considering the circumstances position of the Performer and the overall effect of the extensionPerformer, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Technology Investment Agreement (Amyris, Inc.)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention Invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions Subject Inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent mattersmatters or, in the case of no internal writing from the inventor, within two (2) months after filing a provisional application, provided however that in the event the Performer does not file a provisional application, it shall disclose the Subject Invention to DARPA within two (2) months of determining that a particular set of experiments and or data qualify as a Subject Invention. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Subject Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. The Performer shall also submit to DARPA an annual listing of Subject Inventions. 2. If the Performer determines that it does not intend to retain title to any such Subject Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory 14 of 23 Enclosure 1 Conformed Copy P00011 period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted paragraph C, may, at the discretion of DARPA’s discretion , and after considering the circumstances position of the Performer and the overall effect of the extensionPerformer, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Technology Investment Agreement (Amyris, Inc.)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer Recipient shall disclose each subject invention to DARPA the Program Administrator within four two (42) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA the Program Administrator shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. 2. If the Performer Recipient determines that it does not intend to retain title to any such Inventioninvention, the Performer Recipient shall notify DARPAthe Program Administrator’s Contract Representative, in writing, within eight six (8) 6) months of disclosure to DARPAProgram Administrator. However, in any case where publication, sale, or public use has initiated the one (1)-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA Program Administrator to a date that is no more than sixty fifty (6050) calendar days prior to the end of the statutory period. 3. The Performer Recipient shall file its initial patent application on a subject invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer Recipient may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VIIVIII, may be granted paragraph C, may, at DARPA’s the discretion of Program Administrator, and after considering the circumstances position of the Performer and the overall effect of the extensionRecipient, be granted. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Base Task Order Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. (1. ) The Performer PAH shall disclose each subject invention Subject Invention to DARPA the CMF within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA the CMF shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, biological or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure.. ​ ​ ​ ​ (2. ) If the Performer PAH determines that it does not intend to retain title to any such Inventioninvention, the Performer PAH shall notify DARPAthe CMF, in writing, within eight nine (8) 9) months of disclosure to DARPAdisclosure. However, in any case where publication, sale, sale or public use has initiated the one (1)-year 1) year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA the ACC-NJ through CMF to a date that is no more than sixty six (606) calendar days months prior to the end of the statutory periodproject. (3. ) The Performer PAH shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer MCDC PAH may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. (4. The Performer shall notify DARPA of any decisions not to continue ) After considering the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration position of the response period required by CMF on behalf of the relevant patent office. 5. Requests PAH, a request for extension of the time for disclosure election, and filing under this Article VIIIX, paragraph C, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6approved by ACC-NJ, which ACC-NJ approval shall not be unreasonably withheld. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Base Agreement (Novavax Inc)

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VII, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Sbir Other Transaction for Prototype Agreement

Invention Disclosure, Election of Title, and Filing of Patent Application. 1. The Performer shall disclose each subject invention Subject Invention to DARPA within four (4) months after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention Invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, or electrical characteristics of the Invention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or accepted for publication at the time of disclosure. 2. If the Performer determines that it does not intend to retain title to any such Invention, the Performer shall notify DARPA, in writing, within eight (8) months of disclosure to DARPA. However, in any case where publication, sale, or public use has initiated the one (1)-year one-year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA to a date that is no more than sixty (60) calendar days prior to the end of the statutory period. 3. The Performer shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer may elect to file patent applications in additional countries (countries, including the European Patent Office and the Patent Cooperation Treaty) , within either ten (10) months of the corresponding initial patent application or six (6) months from after the date permission is granted by the Commissioner of for Patents and Trademarks to file foreign patent applications, where such filing has had previously been prohibited by a Secrecy Order. 4. The Performer shall notify DARPA of any decisions not to continue the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration of the response period required by the relevant patent office. 5. Requests for extension of the time for disclosure election, and filing under Article VIIthis Article, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extension. 6. The Performer shall submit to DARPA annual listings of subject inventionsSubject Inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Other Transaction for Prototypes

Invention Disclosure, Election of Title, and Filing of Patent Application. (1. ) The Performer PAH shall disclose each subject invention Subject Invention to DARPA the CMF within four (4) months [* * *] after the inventor discloses it in writing to his company personnel responsible for patent matters. The disclosure to DARPA the CMF shall be in the form of a written report and shall identify the Agreement and circumstances under which the invention was made and the identity of the inventor(s). It shall be sufficiently complete in technical detail to convey a clear understanding, understanding to the extent known at the time of the disclosure, of the nature, purpose, operation, and the physical, chemical, biological, biological or electrical characteristics of the Inventioninvention. The disclosure shall also identify any publication, sale, or public use of the invention and whether a manuscript describing the invention has been submitted and/or for publication and, if so, whether it has been accepted for publication at the time of disclosure. (2. ) If the Performer PAH determines that it does not intend to retain title to any such Inventioninvention, the Performer PAH shall notify DARPAthe CMF, in writing, within eight (8) months [* * *] of disclosure to DARPAdisclosure. However, in any case where publication, sale, sale or public use has initiated the one (1)-year 1) year statutory period wherein valid patent protection can still be obtained in the United States, the period for such notice may be shortened by DARPA the ACC-NJ through CMF to a date that is no more than sixty (60) calendar days [* * *] prior to the end of the statutory periodproject. (3. ) The Performer PAH shall file its initial patent application on a subject invention Subject Invention to which it elects to retain title within one (1) year [* * *] after election of title or, if earlier, prior to the end of the statutory period wherein valid patent protection can be obtained in the United States after a publication, or sale, or public use. The Performer MCDC PAH may elect to file patent applications in additional countries (including the European Patent Office and the Patent Cooperation Treaty) within either ten (10) months [* * *] of the corresponding initial patent application or six (6) months [* * *] from the date permission is granted by the Commissioner of Patents and Trademarks to file foreign patent applications, where such filing has been prohibited by a Secrecy Order. (4. The Performer shall notify DARPA of any decisions not to continue ) After considering the prosecution of a patent application, pay maintenance fees, or defend in a reexamination or opposition proceedings on a patent, in any country, not less than thirty (30) calendar days before the expiration position of the response period required by CMF on behalf of the relevant patent office. 5. Requests PAH, a request for extension of the time for disclosure election, and filing under this Article VIIIX, paragraph C, may be granted at DARPA’s discretion after considering the circumstances of the Performer and the overall effect of the extensionapproved by ACC-NJ, which ACC- NJ approval shall not be unreasonably withheld. 6. The Performer shall submit to DARPA annual listings of subject inventions. At the completion of the Agreement, the Performer shall submit a comprehensive listing of all subject inventions identified during the course of the Agreement and the current status of each.

Appears in 1 contract

Samples: Base Agreement

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