Licensor Patent Rights Clause Samples

Licensor Patent Rights. For avoidance of doubt, Licensor shall have the obligation to prepare, file, prosecute, and maintain all Patents that (a) are Controlled by Licensor as of the Effective Date or (b) come into Licensor’s Control during the Term; provided, however, that, notwithstanding anything stated herein to the contrary, Licensee shall have the right to directly control, at its own cost, the preparation, filing, prosecution and maintenance of any or all Patents within the Licensor Patent Rights (including control over whether any Patent(s) are filed on Licensed IP), upon provision of prior written notice stating Licensee’s election to do so under this Section 8.1. Upon receipt of such written notice, Licensor shall execute, acknowledge and deliver all such further instruments, and to do all such other acts as may be reasonably necessary or appropriate in order to carry out the intent and purpose of this Section 8.1. Licensee shall thereafter give Licensor an opportunity to review and comment on the text of each patent application subject to this Section 8.1 before filing, and shall supply Licensor with a copy of such patent application as filed, together with notice of its filing date and serial number. Licensee shall give due regard to such comments and adopt them unless unreasonable to do so. Licensor shall reasonably cooperate with Licensee, execute all lawful papers and instruments and make all rightful oaths and declarations as may be necessary in the preparation, prosecution and maintenance of all patents and other filings referred to in this Section 8. 1. If Licensee fails to take action in respect of the preparation, filing, prosecution and maintenance of Patents within the Licensor Patent Rights and such that there is imminent risk of loss of rights, Licensor, as its sole and exclusive remedy in any such event, shall be entitled, but not obligated, to assume the sole control, at its sole expense, of such preparation, filing, prosecution and maintenance and shall have such rights as are granted pursuant to this Section 8.1.1 to Licensee prior to its failure to act, which, for avoidance of doubt, shall not be deemed to be a basis for termination hereof.

Licensor Patent Rights. Schedule 1.58 sets forth a complete and accurate list all Licensor Patent Rights as of the Effective Date. All Licensor Patent Rights existing as of the Effective Date have been and are being diligently prosecuted in the respective patent offices in the Territory in accordance with applicable law, have been and are being filed and maintained properly and all applicable fees have been paid on or before the due date for payment, and to the knowledge of Licensor, are not invalid or unenforceable, in whole or in part. There are no oppositions, nullity actions, interferences, inter partes reexaminations, inter partes reviews, post‑grant reviews, derivation proceedings, or other proceedings pending or threatened in writing (but excluding office actions or similar communications issued by the United States Patent Right and Trademark Office or any analogous foreign governmental authority). The inventorship of each Licensor Patent Right is properly identified on each patent and patent application, and to the Licensor’s knowledge there are not any disputes with respect to inventorship of any Licensor Patent Right. All Licensor Patent Rights have been duly and properly filed and maintained and the inventors thereof and to the Licensor’s knowledge the parties prosecuting such applications have complied in all material respects with their duty of candor and disclosure to the U.S. Patent Right and Trademark Office and other foreign patent offices in connection with such applications. The Licensor Patent Rights represent all Patent Rights owned, Controlled, or held for use by Licensor and any of its Affiliates that are necessary or reasonably useful for the Exploitation of the Licensed Antibodies or Licensed Products in the Territory.

Licensor Patent Rights. At the discretion of the IPC, Licensor shall file for extensions of the Licensor Patent Rights in each country and region, at the Parties’ respective cost and expense as directed by the IPC, provided that if the IPC decides not to direct Licensor to file for extension of any patent term, it will give written notice to Licensee of the decision not to file at least sixty (60) days before the deadline for any such filing and Licensee may choose, at its option, to file for any such extension at its own expense. In such case that Licensee chooses to file for any such extension, Licensor shall provide all reasonably requested assistance to Licensee in connection with such filings at Licensee’s request. Licensor shall have the sole and exclusive right to apply for extension of any patent term in any country and/or region outside the Field without prior written notification to Licensee.

Licensor Patent Rights. LICENSEE shall, within 10 Business Days of learning of such event, inform LICENSOR of any request for, or filing or declaration of, any interference, opposition, invalidation, post-grant procedure, reissue or reexamination relating to claims of the Licensor Patent Rights issued or pending as of the Effective Date. With respect to any such request for, or filing or declaration of, any interference, opposition, invalidation, post-grant procedure, reissue or reexamination, LICENSEE shall have the first right (in its discretion) to initiate, prosecute and/or respond, to such action or proceeding, provided that LICENSEE shall consult with LICENSOR with respect to any such action or proceeding and shall not unreasonably reject comments of LICENSOR. In addition, all strategic decisions shall be made by the consensus of LICENSEE and LICENSOR. In the event that LICENSEE elects to initiate, prosecute and/or respond to any interference, opposition, invalidation, post-grant procedure, reexamination, or reissue proceeding relating to any Licensor Patent Right, the out- of-pocket costs, fees and expenses thereof shall be the responsibility of LICENSEE. LICENSEE shall not settle any interference, opposition, invalidation, post-grant procedure, reissue or reexamination action or proceeding relating to any Licensor Patent Right without the prior written consent of LICENSOR, which consent shall not be unreasonably withheld. LICENSEE shall keep LICENSOR informed of developments in any such action or proceeding involving any Licensor Patent Right. LICENSEE shall promptly inform LICENSOR in the event that LICENSEE elects not to initiate, prosecute and/or respond to any interference, opposition, invalidation, post-grant procedure, reissue or reexamination relating to any claim in Licensor Patent Rights, and in such case, LICENSOR shall have the right to do so (in LICENSOR’s discretion), at its cost and expense. LICENSOR shall not settle any interference, opposition, invalidation, post-grant procedure, reissue or reexamination action or proceeding relating to any claim in Licensor Patent Rights without the prior written consent of LICENSEE, which consent shall not be unreasonably withheld. LICENSOR shall keep LICENSEE informed of developments in any such action or proceeding involving any Licensor Patent Right.

Licensor Patent Rights. To Licensor’s Knowledge, Schedule 1.59 sets forth all Patent Rights owned or licensed by Licensor or its Affiliates, or to which Licensor or its Affiliates otherwise have rights, that Cover a Licensed Compound or a Licensed Product or the Exploitation thereof in the Field or that are necessary for such Exploitation as contemplated as of the Effective Date. All such Patent Rights are subsisting, and to Licensor’s Knowledge, valid and enforceable. No written claim or litigation has been brought or asserted against Licensor or its Affiliates or with respect any such Patent Right (and to Licensor’s Knowledge, no such claims have been threatened) by any Person (a) alleging the invalidity, misuse, unregisterability, unenforceability, or non-infringement of any such Patent Rights, or (b) challenging Licensor’s ownership or control of any such Patent Rights The pending applications included in such Patent Rights are being prosecuted using reasonable efforts in the respective Patent Offices in the Territory in accordance with Applicable Law and Licensor and its Affiliates have presented all material references, documents and information of which it and the inventors are aware to the relevant patent examiner at the relevant Patent Office, and all such Patent Rights have been filed and maintained properly and correctly and all applicable fees have been paid on or before the due date for payment, as required under Applicable Law. To Licensor’s Knowledge, each of such Patent Rights properly identifies each and every inventor of the claims thereof as determined in accordance with the laws of the jurisdiction in which such patent is issued or such patent application is currently pending. True, complete, and correct copies of the file wrappers, and to the extent in the possession or control of Licensor or its Affiliates or their respective counsel, other non-privileged or non-work-product documents and materials relating to the Prosecution, defense, or maintenance of such Patent Rights have been provided or made available to Licensee.

Licensor Patent Rights. Licensee shall have the right to determine the Licensor Patent Rights for which it will apply for patent extension in any country and/or region for any Product in the Field. Licensee shall file for any such extension at Licensee’s cost and expense. Licensor shall provide all reasonable assistance to Licensee in connection with such filings, provided that Licensee shall, as Licensor shall elect in its sole discretion, either pre-pay or reimburse any out-of-pocket costs incurred by Licensor in providing such assistance.

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Licensor Patent Rights. The rights and obligations of the Parties with respect to the preparation, filing, prosecution, maintenance, and enforcement of Licensor Patent Rights, including Patents for Developments under Section 6.1, are set forth in this Section 8.1.

Licensor Patent Rights. Licensee shall have the first right, but not the obligation, to bring (or defend) and control any action or proceeding with respect to Infringement of a Licensor Patent Right, at Licensee’s own expense and by counsel of its own choice, and Licensor shall have the right to be represented in any such action or proceeding, at Licensee’s expense and by counsel of Licensor’s choice. If Licensee fails to bring any such action or proceeding with respect to Infringement of any Licensor Patent Right within 60 days (or such shorter period as may be required to prevent the waiver or forfeiture of statutory rights) following the notice of alleged Infringement, Licensor shall have the right to bring (or defend) and control any such action at its own expense and by counsel of its own choice.