Joint Patents. At the initiative of either Party the Parties will consult with each other whether to file any patent applications for Joint Patents relating to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents: 4.1 Any Joint Patent will be listed in Annex B to this Agreement, which will be amended from time to time by written consent of Rosetta and Hadasit. 4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties. 4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents and shall control the prosecution, maintenance and litigation of the Joint Patents. 4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent. 4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply: 4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense"). 4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so. 4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below. 4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any time, in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta shall notify Hadasit of its intent to do so, and sections 4.3 and 4.4 shall apply accordingly. 4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the prosecution and maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent. 4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific Joint Patent in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect to the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdiction.
Appears in 2 contracts
Samples: Research and License Agreement (Rosetta Genomics Ltd.), Research and License Agreement (Rosetta Genomics Ltd.)
Joint Patents. At (i) Neurocrine shall have the initiative of either Party first right, but not the Parties will consult with each other whether obligation, to file prepare, file, prosecute (including any patent applications for interferences, reissue proceedings and re-examinations) and maintain Joint Patents relating using a patent counsel selected by Neurocrine and reasonably acceptable to MTPC. MTPC shall reimburse Neurocrine for all external patent fees and costs incurred with respect to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementpreparation, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosettafiling, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents in the MTPC Territory within […***…] from the date of invoice for such costs and shall control the prosecution, maintenance and litigation of the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 expenses provided by Neurocrine. In the event that Rosetta MTPC does not reimburse Neurocrine for such external patent fees and costs for any Joint Patent in the MTPC or notifies Neurocrine in writing that it elects not to bear cease reimbursing Neurocrine for such external patent fees and costs for any Joint Patent in the expenses relating MTPC Territory, MTPC shall execute such documents and perform such acts, at MTPC’s expense, as may be reasonably necessary to the filing effect an assignment of MTPC’s entire right, title, and interest in and to such Joint Patent to Neurocrine, and such Patent shall cease to be either a Joint Patent or a Neurocrine Patent and shall no longer be subject to the licenses and other rights granted by Neurocrine to MTPC under this Agreement. Neurocrine shall agree to furnish MTPC with copies of all documents relevant to such preparation, filing, prosecution and maintenance with respect to such Joint Patent in a specific file or jurisdiction sufficient time to allow for review by MTPC, to incorporate in which it has been already filed as a patent application, good faith the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time comments of MTPC prior to taking any action to implement such decisions and to otherwise keep MTPC reasonably informed of the date status of the preparation, filing, prosecution and maintenance of such Joint Patent in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense")MTPC Territory.
4.5.2 (ii) In the event that Neurocrine desires to abandon or cease prosecution or maintenance of any Joint Patent in the MTPC Territory (except in the event the Parties mutually decide to abandon or cease prosecution, maintenance or enforcement of such eventJoint Patent), Hadasit Neurocrine shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta MTPC of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than […***…] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Joint Patent in the specific registry relevant patent office). In such case, MTPC may elect to continue prosecution or maintenance of any such Joint Patent in the specific file or jurisdiction for MTPC Territory at its sole discretion and own expense, in which case, all rights in such Joint Patent in the Unpaid Expenses were paid; (ii) Rosetta MTPC Territory shall assign all be assigned to MTPC. Neurocrine shall execute such documents and perform such acts, at its own expense, as may be reasonably necessary to effect an assignment of its rightsentire right, title title, and interest in the and to such Joint Patent registered in the MTPC Territory to MTPC. Any such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any time, in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta shall notify Hadasit of its intent to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as assignment shall be required completed in order a timely manner to facilitate the allow MTPC to continue prosecution and maintenance of any such Joint Patent. Such assistance will include, but Patent and any such Joint Patent so assigned and shall not no longer be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect subject to the prosecution licenses and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific Joint Patent in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect other rights granted by Neurocrine to the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdictionMTPC under this Agreement.
Appears in 2 contracts
Samples: Collaboration and License Agreement (Neurocrine Biosciences Inc), Collaboration and License Agreement (Neurocrine Biosciences Inc)
Joint Patents. At (i) Subject to this Section 10.2(c), Exelixis shall have the initiative first right, but not the obligation, to prepare, file, prosecute, and maintain (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of either Party validity or enforceability challenges) Joint Patents using a patent counsel selected by Exelixis in the Exelixis Territory and counsel mutually agreed to by the Parties will consult in the Collaborator Territory. Collaborator shall reimburse Exelixis for all costs and expenses incurred with each other whether respect to file any patent applications for the preparation, filing, prosecution, and maintenance of Joint Patents relating to in the Results or Collaborator Territory, within [ * ] from the date of invoice for such costs and expenses provided by Exelixis. In the event that Collaborator does not reimburse Exelixis for such costs and expense for any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed or notifies Exelixis in Annex B writing that it elects to this Agreement, which will be amended from time to time by written consent of Rosetta cease reimbursing Exelixis for such costs and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each expense for any Joint Patent. If the law , Collaborator shall execute such documents and perform such acts, at Collaborator’s expense, as may be reasonably necessary to effect an assignment of any jurisdiction Collaborator’s entire right, title, and interest in which an application for and to such Joint Patent to Exelixis, and such Patent shall cease to be either a Joint Patent is filed requires or an Exelixis Patent and shall no longer be subject to the application licenses and other rights granted by Exelixis to be filed in Collaborator under this Agreement. Exelixis shall keep Collaborator informed of material progress with regard to the name preparation, filing, prosecution, maintenance, and defense, if any, of Joint Patents, including content, timing, and jurisdiction of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors filing of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents and shall control the prosecution, maintenance and litigation of the such Joint Patents.
4.4 The prosecution , and maintenance actions include but are not limited Exelixis shall consult with, and consider in good faith the requests and suggestions of, Collaborator with respect to preparing, filing, prosecuting and maintaining patent and patent applications for defending, if any, Joint Patents in the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint PatentCollaborator Territory.
4.5 (ii) In the event that Rosetta elects not Exelixis desires to bear the expenses relating to the filing abandon or cease prosecution or maintenance of a any Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent applicationthe Collaborator Territory, the following terms will apply:
4.5.1 Rosetta Exelixis shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta Collaborator of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than [ * ] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in relevant patent office). In such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maycase, at any time, in its Collaborator’s sole discretion, pay such Unpaid Expenses. In such eventupon written notice from Collaborator to Exelixis, Rosetta shall notify Hadasit of its intent Collaborator may elect to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent in a specific file or jurisdictionat its own expense, if so requested Hadasit will consult with the patent experts of Rosetta with respect and Exelixis shall execute such documents and perform such acts, at Collaborator’s expense, as may be reasonably necessary to allow Collaborator to continue the prosecution and maintenance of such specific Joint Patent in the Collaborator Territory. Any such specific file assignment shall be completed in a timely manner to allow Collaborator to continue prosecution and maintenance of any such Joint Patent and any such Patent so assigned shall cease to be either a Joint Patent or jurisdictiona Collaborator Patent and shall no longer be subject to the licenses and other rights granted by Collaborator to Exelixis under this Agreement.
Appears in 2 contracts
Samples: Collaboration and License Agreement (Exelixis, Inc.), Collaboration and License Agreement (Exelixis, Inc.)
Joint Patents. At (i) Subject to the initiative remainder of either Party this Section 10.2(c), Ovid shall have the first right, but not the obligation, to prepare, file, prosecute, and maintain (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings, and defense of validity or enforceability challenges) Joint Patents using a patent counsel selected by Ovid in the Ovid Territory and counsel mutually agreed to by the Parties will consult in the Licensee Territory.. Ovid shall keep Licensee informed of material progress with each other whether to file any patent applications for Joint Patents relating regard to the Results or any part thereof. The following provisions will apply to any such patent applications for preparation, filing, prosecution, maintenance, and defense, if any, of the Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreement, which will be amended from time to time by written consent of Rosetta including content, timing, and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventorsfiling of such Joint Patents, and Ovid shall consult with, and consider in good faith the Parties will use their best efforts requests and suggestions of, Licensee with respect to procure that the Principal Investigator filing, prosecuting, and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance defending of the Joint Patents and shall control in the prosecution, maintenance and litigation of the Joint PatentsLicensee Territory.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 (ii) In the event that Rosetta elects not Ovid desires to bear the expenses relating to the filing abandon or cease prosecution or maintenance of a any Joint Patent in a specific file or jurisdiction any country in which it has been already filed as a patent applicationthe Licensee Territory, the following terms will apply:
4.5.1 Rosetta Ovid shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta Licensee of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event that Hadasit pays the Unpaid Expenses instead of Rosetta within extent possible, be given no later than sixty (60) days of prior to the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the next deadline for any action that must be taken with respect to any such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in relevant patent office). In such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maycase, at any time, in its Licensee’s sole discretion, pay such Unpaid Expenses. In such eventupon written notice from Licensee to Ovid, Rosetta shall notify Hadasit of its intent Licensee may elect to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent in a specific file or jurisdictionat its own expense, if so requested Hadasit will consult with the patent experts of Rosetta with respect and Ovid shall execute such documents and perform such acts, at Licensee’s expense, as may be reasonably necessary to allow Licensee to continue the prosecution and maintenance of such specific Joint Patent in such specific file country in the Licensee Territory. Any such assignment shall be completed in a timely manner to allow Licensee to continue prosecution and maintenance of any such Joint Patent and any such Patent so assigned shall cease to be either a Joint Patent or jurisdiction.a Licensee Patent and shall no longer be subject to the licenses and other rights granted by Licensee to Ovid under this Agreement
Appears in 2 contracts
Samples: Collaboration and License Agreement (Ovid Therapeutics Inc.), Collaboration and License Agreement (Ovid Therapeutics Inc.)
Joint Patents. At (i) Subject to this Section 11.2(c), Exelixis shall have the initiative first right, but not the obligation, to prepare, file, prosecute and maintain (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of either Party validity or enforceability challenges) Joint Patents using a patent counsel selected by Exelixis in the Exelixis Territory and counsel mutually agreed to by the Parties will consult in the Licensee Territory. Licensee shall reimburse Exelixis for all costs and expenses incurred with each other whether to file any patent applications for Joint Patents relating respect to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementpreparation, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosettafiling, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents in the Licensee Territory, within [ * ] from the date of invoice for such costs and expenses provided by Exelixis. In the event that Licensee does not reimburse Exelixis for such costs and expense for any Joint Patent or notifies Exelixis in writing that it elects to cease reimbursing Exelixis for such costs and expense for any Joint Patent, Licensee shall execute such documents and perform such acts, at Licensee’s expense, as may be reasonably necessary to effect an assignment of Licensee’s entire right, title, and interest in and to such Joint Patent to Exelixis, and such Patent shall cease to be either a Joint Patent or a Exelixis Patent and shall control no longer be subject to the licenses and other rights granted by Exelixis to Licensee under this Agreement. Exelixis shall keep Licensee informed of material progress with regard to the preparation, filing, prosecution, maintenance and litigation defense, if any of Joint Patents, including content, timing and jurisdiction of the filing of such Joint Patents.
4.4 The prosecution , and maintenance actions include but are not limited Exelixis shall consult with, and consider in good faith the requests and suggestions of, Licensee with respect to preparing, filing, prosecuting and maintaining patent and patent applications for defending, if any, Joint Patents in the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint PatentLicensee Territory.
4.5 (ii) In the event that Rosetta elects not Exelixis desires to bear the expenses relating to the filing abandon or cease prosecution or maintenance of a any Joint Patent in a specific file or jurisdiction any country in which it has been already filed as a patent applicationthe Licensee Territory, the following terms will apply:
4.5.1 Rosetta Exelixis shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta Licensee of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than [ * ] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in relevant patent office). In such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maycase, at any time, in its Licensee’s sole discretion, pay such Unpaid Expenses. In such eventupon written notice from Licensee to Exelixis, Rosetta shall notify Hadasit of its intent Licensee may elect to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent in a specific file or jurisdictionat its own expense, if so requested Hadasit will consult with the patent experts of Rosetta with respect and Exelixis shall execute such documents and perform such acts, at Licensee’s expense, as may be reasonably necessary to allow Licensee to continue the prosecution and maintenance of such specific Joint Patent in such specific file country in the Licensee Territory. Any such assignment shall be completed in a timely manner to allow Licensee to continue prosecution and maintenance of any such Joint Patent and any such Patent so assigned shall cease to be either a Joint Patent or jurisdiction.a Licensee Patent and shall no longer be subject to the licenses and other rights granted by Licensee to Exelixis under this Agreement
Appears in 2 contracts
Samples: Collaboration and License Agreement (Exelixis, Inc.), Collaboration and License Agreement (Exelixis, Inc.)
Joint Patents. At (i) Subject to Section 6.2(b)(ii), Poseida shall be responsible for and control the initiative of either Party the Parties will consult with each other whether to file any patent applications for Joint Patents relating to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementpreparation, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosettafiling, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents all patents and shall control the prosecution, maintenance and litigation of patent applications within the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing[…***…]; provided, prosecuting and maintaining patent and patent applications for the Joint Patenthowever, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions that Poseida shall (A) provide all information reasonably requested by Genus with respect to the Joint patent and resolving Patents, (B) promptly notify Genus in writing with respect to file all significant developments regarding the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filedPatents, for the purpose (C) promptly provide Genus with a copy of obtaining wider protection for each material communication from any patent authority regarding the Joint PatentPatents, and (D) provide Genus with drafts of each material filing (including draft patent applications and responses to office actions and similar filings) with respect to the Joint Patents a reasonable amount of time in advance of the anticipated filing date and shall, prior to filing, consider Genus’ reasonable comments in good faith.
4.5 (ii) In the event that Rosetta elects Poseida determines not to bear file, maintain or continue prosecution of any patent or patent application within the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent applicationPatents, the following terms will apply:
4.5.1 Rosetta Poseida shall give Hadasit prior provide Genus written notice within a reasonable time prior to thereof at least […***…] days before the date in which applicable deadline. Upon receipt of such expense is duenotice, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit Genus shall have the right (right, but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so.
4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any timeits expense, to assume responsibility for filing, prosecuting, and maintaining such patents and patent applications. If Genus decides to assume such responsibility, in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta it shall so notify Hadasit of its intent to do so, and sections 4.3 and 4.4 shall apply accordinglyPoseida in writing.
4.6 Hasdasit(iii) As soon as practicable after receipt of the notice from Genus described in Section 6.2(b)(ii), HUH Poseida shall transfer the existing, complete patent files for all applicable patents and their relevant personal, including but not limited patent applications to the Principal InvestigatorGenus, shall reasonably file all documents necessary to transfer correspondence with the U.S. Patent and Trademark Office and other applicable patent authorities to Genus and shall give Genus’ patent counsel power of attorney thereto. Poseida shall cooperate and assist Rosetta and its patent attorney, as shall be required with Genus in order to facilitate the transfer of all prosecution and maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect responsibilities relating to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific Joint Patent in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect to the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdiction.
Appears in 2 contracts
Samples: License Agreement (Poseida Therapeutics, Inc.), License Agreement (Poseida Therapeutics, Inc.)
Joint Patents. At (i) As between the initiative Parties, Xxxxxxx shall have the first right, but not the obligation, to file, prosecute and maintain all Joint Patents throughout the world, at its own expense. Sangamo shall keep Pfizer reasonably informed of either Party the Parties will consult status of Joint Patents and shall promptly provide Pfizer with each other whether to file material correspondence received from any patent applications for authorities in connection therewith. In addition, Xxxxxxx shall promptly provide Pfizer with drafts of all proposed material filings and correspondence to any patent authorities with respect to Joint Patents relating for Pfizer’s review and comment prior to the Results or any part thereofsubmission of such proposed filings and correspondence. The following provisions will apply Sangamo shall confer with Pfizer and take into consideration Pfizer’s comments prior to any submitting such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementfilings and correspondence, which will be amended provided that Pfizer provides such comments within [*] days of receiving the draft filings and correspondence from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint PatentXxxxxxx. If the law Pfizer does not provide comments within such period of any jurisdiction in which an application for a Joint Patent is filed requires the application time, then Pfizer shall be deemed to be filed in the name of the inventors, the Parties will use their best efforts have no comment to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application such proposed filings or correspondence. Subject to the Parties.
4.3 Rosetta shall bear and pay all expenses relating Pfizer’s right to the continue prosecution and maintenance of a Joint Patent pursuant to clause (ii) below, in case of a disagreement between the Joint Patents and shall control the prosecution, maintenance and litigation of the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions Parties with respect to the filing, prosecution or maintenance of Joint patent and resolving Patents, the final decision shall be made by Xxxxxxx.
(ii) Sangamo shall notify Pfizer of any decision to file the cease prosecution and/or maintenance of any Joint Patent in additional jurisdictions any country. Sangamo shall provide such notice at least [*] days prior to any filing or payment due date, or any other than the initial jurisdiction 56 [*] = Certain confidential information contained in which it shall be filedthis document, for the purpose of obtaining wider protection for the Joint Patent.
4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it marked by brackets, has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense omitted because it is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so.
4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: both (i) Hadasit shall take the control of the prosecution of the Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; not material and (ii) Rosetta shall assign all would be competitively harmful if publicly disclosed. due date that requires action in order to avoid loss of its rights, title and interest in the connection with such Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any time, in its sole discretion, pay such Unpaid ExpensesPatent. In such event, Rosetta Sangamo shall notify Hadasit of permit Pfizer, at its intent discretion and expense, to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific Joint Patent in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect to the prosecution and maintenance of such specific Joint Patent in such specific file country. Pfizer’s prosecution or jurisdictionmaintenance of such Joint Patent shall not change the Parties’ respective rights and obligations under this Agreement with respect to such Joint Patent other than those expressly set forth in this Section 10.2(b).
Appears in 1 contract
Samples: Collaboration and License Agreement (Sangamo Therapeutics, Inc)
Joint Patents. At (i) Roivant shall have the initiative of either Party first right in its sole discretion to file, prosecute and maintain any Joint Patents in the Parties will Territory, [***]. CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY [***], HAS BEEN OMITTED BECAUSE DERMAVANT SCIENCES LTD. HAS DETERMINED THE INFORMATION (I) IS NOT MATERIAL AND (II) WOULD LIKELY CAUSE COMPETITIVE HARM TO DERMAVANT SCIENCES LTD. IF PUBLICLY DISCLOSED. EXECUTION VERSION Confidential
(ii) Roivant shall consult with each other whether to file any patent applications for Joint Patents relating to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreement, which will be amended from time to time by written consent of Rosetta Eisai and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name keep Eisai reasonably informed of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance status of the Joint Patents in the Territory and shall control promptly provide Eisai with material correspondences received from patent authorities in connection therewith. In addition, Roivant shall promptly provide Eisai with drafts of all proposed material filings and correspondences to the prosecution, maintenance and litigation of the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions authorities with respect to the Joint patent Patents in the Territory for Eisai’s review and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time comment prior to the date submission of such proposed filings and correspondences. Roivant shall confer with Eisai and consider in which good faith Eisai’s comments prior to submitting such expense is duefilings and correspondences.
(iii) Roivant shall notify Eisai of any decision to cease prosecution and/or maintenance of, including all relevant details regarding the expense, and specifically indicate its intention or not to continue to pay the expense (expenses of prosecution and/or maintenance of, any Joint Patents in the "Unpaid Expense").
4.5.2 In Territory at least [***] prior to any filing or payment due date, or any other due date that requires action, in connection with such eventJoint Patent. If Roivant makes such a decision to cease prosecution and/or maintenance of, Hadasit shall have the right (but or not the obligation) to continue to pay the Unpaid Expensesexpenses of prosecution and/or maintenance of, instead of Rosetta, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so.
4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the any Joint Patent Patents in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta Territory, Roivant shall assign all of its rights, title and interest in the Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maypermit Eisai, at any timeits discretion [***], in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta shall notify Hadasit of its intent to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any such Joint Patent. Such assistance will include, but Eisai’s prosecution or maintenance of such Joint Patent shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or change the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit Parties’ respective rights and its designated patent experts obligations under this Agreement with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent other than as expressly set forth in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect to the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdictionthis Section 5.3(b)(iii).
Appears in 1 contract
Joint Patents. At (i) Roivant shall have the initiative of either Party first right in its sole discretion to file, prosecute and maintain any Joint Patents in the Parties will Territory, [***]. [***] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, IS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED. EXECUTION VERSION Confidential
(ii) Roivant shall consult with each other whether to file any patent applications for Joint Patents relating to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreement, which will be amended from time to time by written consent of Rosetta Eisai and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name keep Eisai reasonably informed of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance status of the Joint Patents in the Territory and shall control promptly provide Eisai with material correspondences received from patent authorities in connection therewith. In addition, Roivant shall promptly provide Eisai with drafts of all proposed material filings and correspondences to the prosecution, maintenance and litigation of the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions authorities with respect to the Joint patent Patents in the Territory for Eisai’s review and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time comment prior to the date submission of such proposed filings and correspondences. Roivant shall confer with Eisai and consider in which good faith Eisai’s comments prior to submitting such expense is duefilings and correspondences.
(iii) Roivant shall notify Eisai of any decision to cease prosecution and/or maintenance of, including all relevant details regarding the expense, and specifically indicate its intention or not to continue to pay the expense (expenses of prosecution and/or maintenance of, any Joint Patents in the "Unpaid Expense").
4.5.2 In Territory at least [***] prior to any filing or payment due date, or any other due date that requires action, in connection with such eventJoint Patent. If Roivant makes such a decision to cease prosecution and/or maintenance of, Hadasit shall have the right (but or not the obligation) to continue to pay the Unpaid Expensesexpenses of prosecution and/or maintenance of, instead of Rosetta, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so.
4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the any Joint Patent Patents in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta Territory, Roivant shall assign all of its rights, title and interest in the Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maypermit Eisai, at any timeits discretion [***], in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta shall notify Hadasit of its intent to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any such Joint Patent. Such assistance will include, but Eisai’s prosecution or maintenance of such Joint Patent shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or change the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit Parties’ respective rights and its designated patent experts obligations under this Agreement with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent other than as expressly set forth in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect to the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdictionthis Section 5.3(b)(iii).
Appears in 1 contract
Joint Patents. At the initiative of either Party the Parties will consult with each other whether to file any Amgen shall have responsibility and control, using outside patent applications for Joint Patents relating to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreement, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application counsel mutually agreeable to the Parties.
4.3 Rosetta , for the preparation, filing, prosecution (including any interferences, reissue proceedings and reexaminations) and maintenance of Joint Patents using efforts and care consistent with the standard set forth in Section 9.2.1. Predix shall bear have the right to review and pay all expenses relating to the comment on such preparation, filing, prosecution and maintenance of the Joint Patents and Amgen will consult with and reasonably consider in good xxxxx Xxxxxx'x comments thereon. To that end, Amgen shall control the prosecution, maintenance and litigation instruct such outside counsel to furnish Predix PORTIONS OF THIS EXHIBIT WERE OMITTED AND HAVE BEEN FILED SEPARATELY WITH THE SECRETARY OF THE COMMISSION PURSUANT TO THE COMPANY'S APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 24b-2 OF THE EXCHANGE ACT; [*] DENOTES OMISSIONS. with a reasonably complete draft of each submission to a patent authority regarding the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other Patents no later than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time twenty (20) days prior to the date such submission is proposed to be made, or if given less than twenty (20) days to respond by the applicable patent authority or Law as soon as practicable. Additionally, Amgen shall instruct such outside counsel to provide Predix with a copy of each submission made to and document received from a patent authority regarding any Joint Patents reasonably promptly after making such filing or receiving such document. Amgen shall not knowingly take any action during filing, prosecution or maintenance of the Joint Patents that would materially adversely affect them (including in which such expense is dueclaim scope), including all relevant details regarding without prior notice to Predix. From time to time, Predix may request in writing that Amgen file a Joint Patents in a particular country and within thirty (30) days thereafter, Amgen will notify Predix in writing of whether or not Amgen elects to do so; provided that [********] shall [********] by the expense, and specifically indicate its intention standard set forth in [********]. If Amgen notifies Predix that Amgen has determined not to pay the expense (the "Unpaid Expense").
4.5.2 In file such eventJoint Patent in such country, Hadasit then Predix shall have the right (right, but not the obligation) , to pay assume responsibility and control (using outside patent counsel mutually acceptable to the Unpaid ExpensesParties), instead of Rosettaat Predix's cost, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so.
4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the prepare, file, prosecute and maintain such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any time, in its sole discretion, pay such Unpaid Expensescountry. In such event, Rosetta shall notify Hadasit of its intent to do so, the rights and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the prosecution and maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control obligations of the prosecution of a specific Joint Patent in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect Parties under Section 9.2.2 shall thereafter apply to the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdictioncountry.
Appears in 1 contract
Joint Patents. At (i) ARS shall have the initiative of either Party the Parties will consult with each other whether first right, to file prepare, file, prosecute (including any patent applications for interferences, reissue proceedings and re-examinations) and maintain Joint Patents relating using a patent counsel selected by ARS and reasonably acceptable to ALFRESA. XXXXXXX shall reimburse ARS for all external patent fees and costs incurred with respect to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementpreparation, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosettafiling, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents in the ALFRESA Territory within [***] from the date of invoice for such costs and shall control the prosecution, maintenance and litigation of the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 expenses provided by ARS. In the event that Rosetta XXXXXXX does not reimburse ARS for such external patent fees and costs for any Joint Patent in the ALFRESA Territory, or ALFRESA notifies ARS in writing that it elects not to bear cease reimbursing ARS for such external patent fees and costs for any Joint Patent in the expenses relating ALFRESA Territory, XXXXXXX shall promptly execute such documents and perform such acts, at XXXXXXX’s expense, as may be reasonably necessary to the filing effect an assignment of XXXXXXX’s entire right, title, and interest in and to such Joint Patent to ARS, and such Patent shall cease to be either a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta an ARS Patent and shall give Hadasit prior written notice within a reasonable time prior no longer be subject to the date licenses and other rights granted by ARS to ALFRESA under this Agreement. ARS shall keep XXXXXXX reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of such Joint Patent (assigned to ARS) in which the ALFRESA Territory; provided that ARS will make all final decisions regarding such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not Joint Patents that are assigned to pay the expense (the "Unpaid Expense")ARS.
4.5.2 (ii) In the event that ARS desires to abandon or cease prosecution or maintenance of any Joint Patent in the ALFRESA Territory (except in the event the Parties mutually decide to abandon or cease prosecution, maintenance or enforcement of such eventJoint Patent) (“Discontinued Joint Patent”), Hadasit ARS shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta ALFRESA of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than [***] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Discontinued Joint Patent in the specific registry relevant patent office). In such case, ALFRESA may elect to continue prosecution or maintenance of such Joint Patent in the specific file or jurisdiction for ALFRESA Territory at its sole discretion and own expense, in which the Unpaid Expenses were paid; (ii) Rosetta shall assign case, all of ARS’s rights in such Joint Patent in the ALFRESA Territory shall be assigned to ALFRESA. ARS shall promptly execute such documents and perform such acts, at its rightsown expense, title as may be reasonably necessary to effect an assignment of its entire right, title, and interest in the Joint Patent registered in and to such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any time, in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta shall notify Hadasit of its intent to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the prosecution and maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific Joint Patent in the ALFRESA Territory to ALFRESA. Any such assignment shall be completed in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect timely manner to the allow ALFRESA to continue prosecution and maintenance of such specific Discontinued Joint Patent and such Discontinued Joint Patent so assigned and shall no longer be subject to the licenses and other rights granted by ARS to ALFRESA under this Agreement. ALFRESA shall keep ARS reasonably informed of progress with regard to the preparation, filing, prosecution and maintenance of such Discontinued Joint Patent in the ALFRESA Territory (particularly to avoid prosecution inconsistencies with ARS Patents and Joint Patents that ARS has not abandoned); provided that XXXXXXX will make all final decisions regarding such specific file or jurisdictionDiscontinued Joint Patents in the ALFRESA Territory that are assigned to ALFRESA.
Appears in 1 contract
Samples: Collaboration and License Agreement (Silverback Therapeutics, Inc.)
Joint Patents. At (i) Subject to this Section 11.2(c), Exelixis shall have the initiative first right, but not the obligation, to prepare, file, prosecute and maintain (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of either Party validity or enforceability challenges) Joint Patents using a patent counsel selected by Exelixis in the Exelixis Territory and counsel mutually agreed to by the Parties will consult in the Licensee Territory. Licensee shall reimburse Exelixis for all costs and expenses incurred with each other whether to file any patent applications for Joint Patents relating respect to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementpreparation, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosettafiling, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents in the Licensee Territory, within [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted because it is both (i) not material and (ii) would be competitively harmful if publicly disclosed. [ * ] from the date of invoice for such costs and expenses provided by Exelixis. In the event that Licensee does not reimburse Exelixis for such costs and expense for any Joint Patent or notifies Exelixis in writing that it elects to cease reimbursing Exelixis for such costs and expense for any Joint Patent, Licensee shall execute such documents and perform such acts, at Licensee’s expense, as may be reasonably necessary to effect an assignment of Licensee’s entire right, title, and interest in and to such Joint Patent to Exelixis, and such Patent shall cease to be either a Joint Patent or a Exelixis Patent and shall control no longer be subject to the licenses and other rights granted by Exelixis to Licensee under this Agreement. Exelixis shall keep Licensee informed of material progress with regard to the preparation, filing, prosecution, maintenance and litigation defense, if any of Joint Patents, including content, timing and jurisdiction of the filing of such Joint Patents.
4.4 The prosecution , and maintenance actions include but are not limited Exelixis shall consult with, and consider in good faith the requests and suggestions of, Licensee with respect to preparing, filing, prosecuting and maintaining patent and patent applications for defending, if any, Joint Patents in the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint PatentLicensee Territory.
4.5 (ii) In the event that Rosetta elects not Exelixis desires to bear the expenses relating to the filing abandon or cease prosecution or maintenance of a any Joint Patent in a specific file or jurisdiction any country in which it has been already filed as a patent applicationthe Licensee Territory, the following terms will apply:
4.5.1 Rosetta Exelixis shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta Licensee of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than [ * ] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in relevant patent office). In such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maycase, at any time, in its Licensee’s sole discretion, pay such Unpaid Expenses. In such eventupon written notice from Licensee to Exelixis, Rosetta shall notify Hadasit of its intent Licensee may elect to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent in a specific file or jurisdictionat its own expense, if so requested Hadasit will consult with the patent experts of Rosetta with respect and Exelixis shall execute such documents and perform such acts, at Licensee’s expense, as may be reasonably necessary to allow Licensee to continue the prosecution and maintenance of such specific Joint Patent in such specific file country in the Licensee Territory. Any such assignment shall be completed in a timely manner to allow Licensee to continue prosecution and maintenance of any such Joint Patent and any such Patent so assigned shall cease to be either a Joint Patent or jurisdiction.a Licensee Patent and shall no longer be subject to the licenses and other rights granted by Licensee to Exelixis under this Agreement
Appears in 1 contract
Samples: Collaboration and License Agreement (Exelixis, Inc.)
Joint Patents. At (i) Subject to this Section 10.2(c), Exelixis shall have the initiative first right, but not the obligation, to prepare, file, prosecute, and maintain (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary [ * ] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of either Party the Securities Exchange Act of 1934, as amended. protection certificates, oppositions, invalidation proceedings and defense of validity or enforceability challenges) Joint Patents using a patent counsel selected by Exelixis in the Exelixis Territory and counsel mutually agreed to by the Parties will consult in the Collaborator Territory. Collaborator shall reimburse Exelixis for all costs and expenses incurred with each other whether respect to file any patent applications for the preparation, filing, prosecution, and maintenance of Joint Patents relating to in the Results or Collaborator Territory, within [ * ] from the date of invoice for such costs and expenses provided by Exelixis. In the event that Collaborator does not reimburse Exelixis for such costs and expense for any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed or notifies Exelixis in Annex B writing that it elects to this Agreement, which will be amended from time to time by written consent of Rosetta cease reimbursing Exelixis for such costs and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each expense for any Joint Patent. If the law , Collaborator shall execute such documents and perform such acts, at Collaborator’s expense, as may be reasonably necessary to effect an assignment of any jurisdiction Collaborator’s entire right, title, and interest in which an application for and to such Joint Patent to Exelixis, and such Patent shall cease to be either a Joint Patent is filed requires or an Exelixis Patent and shall no longer be subject to the application licenses and other rights granted by Exelixis to be filed in Collaborator under this Agreement. Exelixis shall keep Collaborator informed of material progress with regard to the name preparation, filing, prosecution, maintenance, and defense, if any, of Joint Patents, including content, timing, and jurisdiction of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors filing of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents and shall control the prosecution, maintenance and litigation of the such Joint Patents.
4.4 The prosecution , and maintenance actions include but are not limited Exelixis shall consult with, and consider in good faith the requests and suggestions of, Collaborator with respect to preparing, filing, prosecuting and maintaining patent and patent applications for defending, if any, Joint Patents in the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint PatentCollaborator Territory.
4.5 (ii) In the event that Rosetta elects not Exelixis desires to bear the expenses relating to the filing abandon or cease prosecution or maintenance of a any Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent applicationthe Collaborator Territory, the following terms will apply:
4.5.1 Rosetta Exelixis shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta Collaborator of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than [ * ] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in relevant patent office). In such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maycase, at any time, in its Collaborator’s sole discretion, pay such Unpaid Expenses. In such eventupon written notice from Collaborator to Exelixis, Rosetta shall notify Hadasit of its intent Collaborator may elect to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent in a specific file or jurisdictionat its own expense, if so requested Hadasit will consult with the patent experts of Rosetta with respect and Exelixis shall execute such documents and perform such acts, at Collaborator’s expense, as may be reasonably necessary to allow Collaborator to continue the prosecution and maintenance of such specific Joint Patent in the Collaborator Territory. Any such specific file assignment shall be completed in a timely manner to allow Collaborator to continue prosecution and maintenance of any such Joint Patent and any such Patent so assigned shall cease to be either a Joint Patent or jurisdictiona Collaborator Patent and shall no longer be subject to the licenses and other rights granted by Collaborator to Exelixis under this Agreement.
Appears in 1 contract
Samples: Collaboration and License Agreement (Exelixis, Inc.)
Joint Patents. At (i) As between the initiative Parties, Sangamo shall have the first right, but not the obligation, to file, prosecute and maintain all Joint Patents throughout the world, at its own expense. Sangamo shall keep Pfizer reasonably informed of either Party the Parties will consult status of Joint Patents and shall promptly provide Pfizer with each other whether to file material correspondence received from any patent applications for authorities in connection therewith. In addition, Sangamo shall promptly provide Pfizer with drafts of all proposed material filings and correspondence to any patent authorities with respect to Joint Patents relating for Pfizer’s review [*] = Certain confidential information contained in this document, marked by brackets, has been omitted and filed separately with the Securities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended. and comment prior to the Results or any part thereofsubmission of such proposed filings and correspondence. The following provisions will apply Sangamo shall confer with Pfizer and take into consideration Pfizer’s comments prior to any submitting such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementfilings and correspondence, which will be amended provided that Pfizer provides such comments within [*] days of receiving the draft filings and correspondence from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosetta, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint PatentSangamo. If the law Pfizer does not provide comments within such period of any jurisdiction in which an application for a Joint Patent is filed requires the application time, then Pfizer shall be deemed to be filed in the name of the inventors, the Parties will use their best efforts have no comment to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application such proposed filings or correspondence. Subject to the Parties.
4.3 Rosetta shall bear and pay all expenses relating Pfizer’s right to the continue prosecution and maintenance of a Joint Patent pursuant to clause (ii) below, in case of a disagreement between the Joint Patents and shall control the prosecution, maintenance and litigation of the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions Parties with respect to the filing, prosecution or maintenance of Joint patent and resolving Patents, the final decision shall be made by Sangamo.
(ii) Sangamo shall notify Pfizer of any decision to file the cease prosecution and/or maintenance of any Joint Patent in additional jurisdictions any country. Sangamo shall provide such notice at least [*] days prior to any filing or payment due date, or any other than the initial jurisdiction due date that requires action in which it shall be filedorder to avoid loss of rights, for the purpose of obtaining wider protection for the in connection with such Joint Patent.
4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so.
4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any time, in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta Sangamo shall notify Hadasit of permit Pfizer, at its intent discretion and expense, to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific Joint Patent in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect to the prosecution and maintenance of such specific Joint Patent in such specific file country. Pfizer’s prosecution or jurisdictionmaintenance of such Joint Patent shall not change the Parties’ respective rights and obligations under this Agreement with respect to such Joint Patent other than those expressly set forth in this Section 10.2(b).
Appears in 1 contract
Samples: Collaboration and License Agreement (Sangamo Therapeutics, Inc)
Joint Patents. At the initiative (a) Subject to, and without limiting Licensee’s rights under, Section 9.4 of either Party the Parties will consult with each other whether to file any patent applications for Joint Patents relating to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreement, which Amarin shall have the first right to prepare, file, prosecute and maintain Joint Patents. Amarin shall keep Licensee informed of the status of Joint Patents and will be amended from provide Licensee with copies of all substantive documentation submitted to, or received from, the patent offices in connection therewith. With respect to any substantive submissions that Amarin is required to or otherwise intends to submit to a patent office with respect to a Joint Patent, Amarin shall provide a draft of such submission to Licensee at least [***] (or such time as is possible) prior to time the deadline for, or the intended filing date of, such submission, whichever is earlier (or as soon as reasonably possible if Amarin has less than [***] notice of a deadline for submission). Licensee shall have the right to review and comment upon any such submission by written consent Amarin to a patent office, and will provide such comments within [***] after receiving such submission (provided, that if no comments are received within such [***], then Amarin may proceed with such submission). Amarin shall consider in good faith any suggestions or recommendations of Rosetta Licensee concerning the preparation, filing, prosecution and Hadasitmaintenance thereof.
4.2 The (b) If, during the Term, Amarin (i) intends to allow any Joint Patents will be registered Patent to expire or intends to otherwise abandon any such Joint Patent (“Abandoned Patents”), or (ii) decides not to prepare or file patent applications covering Joint Inventions (“Abandoned Joint Inventions”) Amarin shall notify Licensee of such intention or decision at least [***] (or as jointly owned by Hadasit and Rosettasoon as possible if less than [***]) prior to any filing or payment due date, or any other date that requires action, in equal undivided shares. The Principal Investigator connection with such Abandoned Patent or Abandoned Joint Invention, and inventor(s) designated by Rosetta will be registered as Licensee shall thereupon have the investors of each Joint Patent. If right, but not the law of any jurisdiction in which an application obligation, to assume responsibility for a Joint Patent is filed requires the application to be filed preparation, filing, prosecution or maintenance thereof at its sole cost and expense, in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the PartiesLicensee.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents and shall control the prosecution, maintenance and litigation of the Joint Patents.
4.4 The prosecution and maintenance actions include but are not limited to preparing, filing, prosecuting and maintaining patent and patent applications for the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta reasonable prior written notice to Rosetta of its intent to do so.
4.5.3 In the event that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta may, at any time, in its sole discretion, pay such Unpaid Expenses. In such event, Rosetta shall notify Hadasit of its intent to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the prosecution and maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific Joint Patent in a specific file or jurisdiction, if so requested Hadasit will consult with the patent experts of Rosetta with respect to the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdiction.
Appears in 1 contract
Samples: Development, Commercialization and Supply Agreement (Amarin Corp Plc\uk)
Joint Patents. At (i) Subject to this Section 9.2(c), Exelixis shall have the initiative of either Party first right, but not the Parties will consult with each other whether obligation, to file prepare, file, prosecute, and maintain (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of validity or enforceability challenges) the Joint Patents relating using a patent counsel selected by Exelixis and reasonably acceptable to Adagene. Adagene shall reimburse Exelixis for [***] of the costs and expenses incurred with respect to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementpreparation, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosettafiling, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventorsprosecution, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents in the Territory, within [***] after receipt of an invoice for such costs and expenses together with reasonable documentation evidencing such costs and expenses provided by Exelixis. In the event that Adagene does not reimburse Exelixis for such costs and expenses for any Joint Patent or notifies Exelixis in writing that it elects to cease reimbursing Exelixis for such costs and expense for any Joint Patent, Adagene shall execute such documents and perform such acts, at Adagene’s expense, as may be reasonably necessary to effect an assignment of Adagene’s entire right, title, and interest in and to such Joint Patent to Exelixis, and such Patent shall cease to be a Joint Patent and shall control no longer be subject to the licenses and other rights granted by Exelixis to Adagene under this Agreement. Exelixis shall keep Adagene informed of material progress with regard to the preparation, filing, prosecution, maintenance maintenance, and litigation defense, if any, of the Joint Patents.
4.4 The prosecution , including content, timing, and maintenance actions include but are not limited to preparingjurisdiction of the filing of such Joint Patents, filingand Exelixis shall consult with, prosecuting and maintaining patent and patent applications for consider in good faith the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions reasonable comments of Adagene with respect to filing, prosecuting, and defending the Joint patent and resolving Patents in the Territory.
(ii) If Exelixis desires to file the abandon or cease prosecution or maintenance of any Joint Patent in additional jurisdictions other than the initial jurisdiction in which it Territory, Exelixis shall be filed, for the purpose of obtaining wider protection for the Joint Patent.
4.5 In the event that Rosetta elects not to bear the expenses relating to the filing of a Joint Patent in a specific file or jurisdiction in which it has been already filed as a patent application, the following terms will apply:
4.5.1 Rosetta shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta Adagene of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than [***] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in relevant patent office). In such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maycase, at any time, in its Adagene’s sole discretion, pay such Unpaid Expenses. In such eventupon written notice from Adagene to Exelixis, Rosetta shall notify Hadasit of its intent Adagene may elect to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent in a specific file or jurisdictionat its own expense, if so requested Hadasit will consult with the patent experts of Rosetta with respect and Exelixis shall execute such documents and perform such acts, at Adagene’s expense, as may be reasonably necessary to assign to Adagene Exelixis’ ownership interest therein and to allow Adagene to continue the prosecution and maintenance of such specific Joint Patent in such specific file or jurisdictionthe Territory. Any patents so assigned shall cease to be a Joint Patent and shall thereafter be Adagene Patents subject to the licenses herein.
Appears in 1 contract
Joint Patents. At (i) Subject to this Section 11.2(c), Exelixis shall have the initiative first right, but not the obligation, to prepare, file, prosecute and maintain (including any interferences, reissue proceedings, reexaminations, patent term extensions, applications for supplementary protection certificates, oppositions, invalidation proceedings and defense of either Party validity or enforceability challenges) Joint Patents using a patent counsel selected by Exelixis in the Exelixis Territory and counsel mutually agreed to by the Parties will consult in the Licensee Territory. Licensee shall reimburse Exelixis for all costs and expenses incurred with each other whether to file any patent applications for Joint Patents relating respect to the Results or any part thereof. The following provisions will apply to any such patent applications for Joint Patents:
4.1 Any Joint Patent will be listed in Annex B to this Agreementpreparation, which will be amended from time to time by written consent of Rosetta and Hadasit.
4.2 The Joint Patents will be registered as jointly owned by Hadasit and Rosettafiling, in equal undivided shares. The Principal Investigator and inventor(s) designated by Rosetta will be registered as the investors of each Joint Patent. If the law of any jurisdiction in which an application for a Joint Patent is filed requires the application to be filed in the name of the inventors, the Parties will use their best efforts to procure that the Principal Investigator and any other inventors of the patent will cooperate in so filing the application for the patent and will thereafter assign the application to the Parties.
4.3 Rosetta shall bear and pay all expenses relating to the prosecution and maintenance of the Joint Patents in the Licensee Territory, within [ * ] from the date of invoice for such costs and expenses provided by Exelixis. In the event that Licensee does not reimburse Exelixis for such costs and expense for any Joint Patent or notifies Exelixis in writing that it elects to cease reimbursing Exelixis for such costs and expense for any Joint Patent, Licensee shall execute such documents and perform such acts, at Licensee’s expense, as may be reasonably necessary to effect an assignment of Licensee’s entire right, title, and interest in and to such Joint Patent to Exelixis, and such Patent shall cease to be either a Joint Patent or a Exelixis Patent and shall control no longer be subject to the licenses and other rights granted by Exelixis to Licensee under this Agreement. Exelixis shall keep Licensee informed of material progress with regard to the preparation, filing, prosecution, maintenance and litigation defense, if any of Joint Patents, including content, timing and jurisdiction of the filing of such Joint Patents.
4.4 The prosecution , and maintenance actions include but are not limited Exelixis shall consult with, and consider in good faith the requests and suggestions of, Licensee with respect to preparing, filing, prosecuting and maintaining patent and patent applications for defending, if any, Joint Patents in the Joint Patent, managing any proceedings relating to any interferences or reexaminations, or requesting reissues or patent term extensions with respect to the Joint patent and resolving to file the Joint Patent in additional jurisdictions other than the initial jurisdiction in which it shall be filed, for the purpose of obtaining wider protection for the Joint PatentLicensee Territory.
4.5 (ii) In the event that Rosetta elects not Exelixis desires to bear the expenses relating to the filing abandon or cease prosecution or maintenance of a any Joint Patent in a specific file or jurisdiction any country in which it has been already filed as a patent applicationthe Licensee Territory, the following terms will apply:
4.5.1 Rosetta Exelixis shall give Hadasit prior written notice within a reasonable time prior to the date in which such expense is due, including all relevant details regarding the expense, and specifically indicate its intention not to pay the expense (the "Unpaid Expense").
4.5.2 In such event, Hadasit shall have the right (but not the obligation) to pay the Unpaid Expenses, instead of Rosetta, provided that it has given Rosetta provide reasonable prior written notice to Rosetta Licensee of its intent such intention to do so.
4.5.3 In abandon (which notice shall, to the event extent possible, be given no later than [ * ] prior to the next deadline for any action that Hadasit pays the Unpaid Expenses instead of Rosetta within sixty (60) days of the date of receipt of notice from Rosetta: (i) Hadasit shall take the control of the prosecution of the must be taken with respect to any such Joint Patent in the specific registry of the specific file or jurisdiction for which the Unpaid Expenses were paid; (ii) Rosetta shall assign all of its rights, title and interest in the Joint Patent registered in relevant patent office). In such specific file or jurisdiction to Hadasit, within 30 days of a written request by Hadasit, following payment of the Unpaid Expenses by Hadasit. Nothing contained in sections 4.5.2 and 4.5.3 shall affect, in any way, any rights of Rosetta under this Agreement, including rights pertaining to the License under Section 7 below.
4.5.4 In the event that Hadasit has not paid the Unpaid Expenses instead of Rosetta, Rosetta maycase, at any time, in its Licensee’s sole discretion, pay such Unpaid Expenses. In such eventupon written notice from Licensee to Exelixis, Rosetta shall notify Hadasit of its intent Licensee may elect to do so, and sections 4.3 and 4.4 shall apply accordingly.
4.6 Hasdasit, HUH and their relevant personal, including but not limited to the Principal Investigator, shall reasonably cooperate and assist Rosetta and its patent attorney, as shall be required in order to facilitate the continue prosecution and or maintenance of any Joint Patent. Such assistance will include, but shall not be limited to signature on any formal document or form which shall require Hadasit's, HUH's or the Principal Investigator's signature for the purpose of filing or maintaining any Joint Patent.
4.7 If so requested, Rosetta shall consult with Hadasit and its designated patent experts with respect to the prosecution and maintenance of Joint Patents. If the event described in Section 4.5.3 above occurs and Hadasit assumes control of the prosecution of a specific such Joint Patent in a specific file or jurisdictionat its own expense, if so requested Hadasit will consult with the patent experts of Rosetta with respect and Exelixis shall execute such documents and perform such acts, at Licensee’s expense, as may be reasonably necessary to allow Licensee to continue the prosecution and maintenance of such specific Joint Patent in such specific file country in the Licensee Territory. Any such assignment shall be completed in a timely manner to allow Licensee to continue prosecution and maintenance of any such Joint Patent and any such Patent so assigned shall cease to be either a Joint Patent or jurisdiction.a Licensee Patent and shall no longer be subject to the licenses and other rights granted by Licensee to Exelixis under this Agreement (d)
Appears in 1 contract
Samples: Collaboration and License Agreement
